To: | NuWave, LLC (christopher.nunley@nuwavenow.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86380747 - NUWAVE - N/A |
Sent: | 12/20/2014 6:31:10 PM |
Sent As: | ECOM119@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86380747
MARK: NUWAVE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: NuWave, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 12/20/2014
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF MARKS
The applicant has applied for the standard character mark NUWAVE.
The standard character marks of the registrants are as follows:
NUWAVE (U.S. Registration No. 4467335)
NUWAVE REWARDS (U.S. Registration No. 4414084 )
NUWAVE CONTAINER (U.S. Reg. No. 4120813)
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
In the present case, applicant’s mark is NUWAVE and the mark in U.S. Registration No. 4467335 is NUWAVE. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s services and registrant’s goods. Therefore, the marks are confusingly similar.
With regard to the mark NUWAVE REWARDS (U.S. Registration No. 4414084 ) and the mark
NUWAVE CONTAINER (U.S. Reg. No. 4120813), consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Here the first dominant term of those registered marks are identical to the applicant’s mark.
The marks all the dominant (or only) term “NUWAVE”. In this respect, of the applicant’s mark and those of the registrants are identical or highly similar in appearance, sound, connotation and commercial impression, and therefore, are likely to cause confusion as to the origin of the goods and services.
COMPARISON OF GOODS/SERVICES
The applicant’s services are identified as “Invent, develop, manufacture, market, and sell consumer housewares and home goods.”
The goods and services in the registrations are identified as follows:
NUWAVE (U.S. Registration No. 4467335)
Class 9: Consumer electronic products, namely, audio amplifiers, electrical audio and speaker cables and connectors, audio decoders, video decoders, power conversion devices, power converters, and power inverters
NUWAVE REWARDS (U.S. Registration No. 4414084)
Class 35: Arranging and conducting incentive reward programs to promote the sale of retailer merchandise.
NUWAVE CONTAINER (U.S. Reg. No. 4120813)
Class 20: Non-metal recycling bins for commercial use.
Class 21: Refuse bins; non-metal recycling bins for household use
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case the applicant’s services are indefinitely and broadly identified as pertaining to the invention, development, manufacturing, marketing, and selling of consumer housewares and home goods. The consumer electronics products, refuse bins, and recycling bins in the identification of goods of the registrants are encompassed by the wording “housewares and home goods” in applicant’s identification of services.
Furthermore, the registrant’s services identified as “arranging and conducting incentive reward programs to promote the sale of retailer merchandise” are promotional activities encompassed by applicant’s broad wording “market”, and therefore must also be presumed to be closely related to the applicant’s services that feature the sale of “housewares and home goods”.
In sum, the marks are used to identify closely related goods and services, as the applicant’ services that pertain to home goods and housewares encompass the promotional services that overlap with the promotional services identified in one registration, and the applicant’s services also encompass services that pertain to and/or feature the consumer electronics and containers goods identified in the two other registrations. Therefore the same consumers must be presumed to be exposed to the goods and services identified with the marks. The similarities among the marks and the goods and services of the parties are so great as to create a likelihood of confusion.
CONCLUSION
Accordingly, in view of the closely related nature of the goods and services of the parties and the identical and strongly similar nature of the marks and their commercial impressions, confusion as to the source of the goods and services is likely under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following.
INFORMATION ABOUT SERVICES REQUIRED
To permit proper examination of the application, applicant must submit additional information about the services. See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §814. The requested information should include fact sheets, brochures, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ. If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.
The submitted factual information must make clear what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. Merely stating that information about the services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, 70 USPQ2d at 1457-58.
CLAIM OF OWNERSHIP OF REGISTRATIONS
Applicant may use the following format to claim ownership of these registrations:
Applicant is the owner of U.S. Registration Nos. 2826443, 4426391, 4652905, and others.
IDENTIFICATION AND CLASSIFICATION OF SERVICES
Applicant has identified its services as follows:
Class 35: Invent, develop, manufacture, market, and sell consumer housewares and home goods
Applicant may clarify that the “market” services refer to the promotion of the housewares and home goods of others by amending the wording to “marketing services for the housewares and home goods of others.” Furthermore, applicant must delete “sell” and indicate with greater specificity the nature of the service, e.g., “retail store services featuring housewares and home goods,” “mail order services featuring housewares and home goods” or “on-line retail store services featuring housewares and home goods” in Class 35.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Applicant may adopt the following identification of services, if accurate:
Class 35: marketing services for the housewares and home goods of others; retail store services featuring housewares and home goods; mail order services featuring housewares and home goods; on-line retail store services featuring housewares and home goods
Class 40: manufacture of housewares and home goods to order and/or specification of others
Class 42: product development for others in the field of housewares and home goods
See TMEP §1402.01.
MULTIPLE – CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The filing fees for adding classes to an application are as follows:
(1) A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).
(2) A $375 fee per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 35 only; if applicant adds Classes 40 and 42, applicant needs a specimen for those classes.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.
/John M. C. Kelly/
United States Patent and Trademark Office
Trademark Examining Attorney
Law Office 119
571-272-9412
john.kelly@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.