To: | Fossa Ltd. (sploen@ploen.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86691634 - FOSSA - FOS-605 |
Sent: | 11/17/2015 6:34:00 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86691634
MARK: FOSSA
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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: Fossa Ltd.
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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: 11/17/2015
This communication responds to applicant’s response dated October 29, 2015.
SUMMARY OF ISSUES that applicant must address:
Likelihood of Confusion: maintained; repeated and made Final:
The registered mark(s) is/are: U.S. Registration No. 4364289 for “FOSSA APPAREL and design” for coats; golf shirts; jackets; polo shirts; pullovers; vests; pants; shorts; sweat pants; swat pants; sweat shirts; sweaters; T-shirts; shirts” in Int. class 25.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
Similarities in Appearance, Sound, Connotation and Commercial Impression:
“FOSSA vs. FOSSA APPAREL and design”
These marks both feature the identical term FOSSA in them which has the same commercial impression of shallow depression or hollow. See previously attached definition.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))).
The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Goods:
The applicant features fashion accessories and jewelry made of sheep horns. The registered mark is for coats; golf shirts; jackets; polo shirts; pullovers; vests; pants; shorts; sweat pants; swat pants; sweat shirts; sweaters; T-shirts; shirts" in Int. class 25.
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration has 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. Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification.
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Other Informalities:
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Beyond the Scope:
An acceptable identification of goods and/or services is required in an application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01. An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
The application originally identified the goods as follows: “edible chews for dogs made of lamb and sheep horns; all-natural digestible chewing bones for dogs; pet treats in the nature of bully sticks; protein for animal consumption; chewing treats of pig ears, pig snouts, pig hooves, pig ankles, cow hooves, sheep hooves, bone marrow, and other animal byproducts; animal foodstuffs, namely, flaked food made of sheep horns; desiccated liver treats for pets; dehydrated fish products made from fish, namely, fish chips; dietary supplements for pets, namely, fish oils and fish powders; fish skins; fish leather; animal byproducts, namely, marrow from bones and horns; religious artifacts; religious items; fashion accessories; decorative items, namely, figurines, sculptures, holiday-type ornaments, and decorative keepsakes and trinkets; powders and extracts from mosses; jewelry made of sheep horns; drinking vessels and tableware made of sheep horns; dietary food supplements and nutritional supplements prepared using natural materials.”
However, the proposed amendment identifies the goods and/or services as follows: “waste management services in Int. Class 40.”
This portion of the proposed amendment is beyond the scope of the original identification because the applicant amended from goods to services and furthermore the applicant amended to services which were not covered by the original identification of goods.
Thus, the identification, incorporating this amendment, is not acceptable. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01.
Identification of Goods:
Applicant must clarify the identification of goods by providing further information and clarification about the goods. See TMEP §1402.01.
Various goods are classified incorrectly. Applicant must amend the application to classify the goods in the correct International Classes. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The wording “religious artifacts; religious items; fashion accessories; decorative items, namely, figurines, sculptures, holiday-type ornaments, and decorative keepsakes and trinkets; powders and extracts from mosses; fish skins; fish leather; animal byproducts, namely, marrow from bones and horns” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.
Applicant may adopt the following identification, if accurate:
International Class 5
Dietary supplements for pets, namely, fish oils; dietary food supplements and nutritional supplements prepared using natural materials.
International Class 8
Tableware made of sheep horns, namely, knives, forks and spoons.
International Class 14:
Jewelry made of sheep horns.
International Class 31
Edible chews for dogs made of lamb and sheep horns; all-natural digestible chewing bones for dogs; pet treats in the nature of bully sticks; protein for animal consumption; pet chewing treats of pig ears, pig snouts, pig hooves, pig ankles, cow hooves, sheep hooves, bone marrow, and other animal byproducts; animal foodstuffs, namely, flaked food made of sheep horns; desiccated liver treats for pets; dehydrated fish food made from fish, namely, fish chips; fish food, namely, fish powders.
International Class 21:
Drinking vessels made of sheep horns.
For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Recitation and Identification Amendment Advisory:
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b)
Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
Remedies for Final Action:
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
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.
/LDA/
Lourdes Ayala, Attorney at Law
Law Office 106
Telephone Number 571-272-9316
Fax: 571-272-9106
Lourdes.Ayala@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.