To: | Russell Capital Ventures Inc. (bijan.dokhanian@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86528871 - ARIEL - N/A |
Sent: | 5/18/2015 5:54:07 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
Attachment - 1
Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86528871 MARK: ARIEL | |
CORRESPONDENT ADDRESS: | CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/trademarks/teas/response_forms.jsp |
APPLICANT: Russell Capital Ventures Inc. | |
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
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: 5/18/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search:
Refusal - Likelihood of Confusion - Trademark Act Section 2(d):
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 the Marks:
In the present case, applicant’s mark is ARIEL and registrant’s mark is ARIEL both in standard character form. 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 and registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
Comparison of the Goods:
Here the applicant has identified its goods as “Garbage bags of plastics; General purpose plastic bags; Plastic food storage bags for household use; Plastic oven cooking bags; Plastic sandwich bags; Plastic trash bags”, in class 16 and “Containers for household or kitchen use; General purpose storage bins for household use; Household containers for foods; Kitchen containers; Laundry baskets; Laundry bins for domestic or household use; Laundry hampers for domestic or household use; Plastic storage containers for household use; Trash containers for household use; Waste baskets”, in class 21.
The registrant’s goods are “Articles made from imitations of leather, namely, luggage, waist packs; bags, namely, backpacks, book bags, duffel bags, overnight bags; shopping bags of textile; tote bags; purses; handbags”, in class 18 and “Housewares, namely, bowls, cookie cutters, cups, dishes, figurines made of porcelain, mugs, plates, tea kettles, thermal insulated containers for food or beverage, trays not of precious metal, containers for household use; dinnerware; beverage ware; plastic cups; cookie jars”, in class 21.
In this case, the identifications set forth in the application and registration in class 21 are identical and have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Accordingly, the goods of applicant and the registrant in class 21 are considered related for purposes of the likelihood of confusion analysis.
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Therefore as to class 16 and 18 goods identified, they are related. Specifically, “General purpose plastic bags”, in class 16 and “bags, namely, backpacks, book bags, duffel bags, overnight bags; shopping bags of textile; tote bags; purses; handbags”, in class 18.
Conclusion:
As the marks of the parties are identical or highly similar, and the goods and services and content of the parties identical and highly related, there exists a likelihood of confusion as to the source of the goods and services and registration is refused.
Response:
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.
Go to http://www.uspto.gov/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.
TEAS PLUS or TEAS REDUCED FEE (TEAS RF) Applicants – To Maintain Lower Fee, Additional Requirements Must Be Met, Including Submitting Documents Online:
Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.
To Update Correspondence/e-mail Address:
Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
/JSD/
Jeffrey S. DeFord
Examining Attorney
Law Office 115
571 272-9469
jeffrey.deford@uspto.gov