To: | AMS, LLC (cbraun@amsbowfishing.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86817307 - SATURN - N/A |
Sent: | 12/21/2015 3:46:31 PM |
Sent As: | ECOM112@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86817307
MARK: SATURN
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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: AMS, 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: 12/21/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4345096. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant applied to register the mark SATURN for Archery equipment, namely, open bow sights.
Registrant Satern Custom Machining, Inc.’s registered mark is SATERN for “firearm components and accessories, namely, magazine followers being component parts for firearms, muzzle brakes being component parts and attachments for firearms, scope bases being attachments for rifle scope rings, flash hiders being attachments to firearms for reducing visible flash from a firearm muzzle, bolts being mechanical components of rifles, rifled barrels, gas blocks being component parts of firearms, and bolt carriers being component parts of firearms; cleaning implements for firearms, namely, bore guides,” and “powder funnels.”
Standard of Law
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. 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
Applicant’s mark is SATURN. Registrant’s mark is SATERN.
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 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). In addition, the marks have very similar appearances as the marks only differ by one letter, SATURN compared to SATERN.
Therefore, because the marks have identical sounds and similar appearances, resulting in a similar overall commercial impression, this factor weighs in favor of a likelihood of confusion.
Comparison of the Goods and Trade Channels
The respective goods 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).
Here, applicant’s “archery equipment, namely, open bow sights” and registrant’s “firearm components and accessories, namely, magazine followers being component parts for firearms, muzzle brakes being component parts and attachments for firearms, scope bases being attachments for rifle scope rings, flash hiders being attachments to firearms for reducing visible flash from a firearm muzzle, bolts being mechanical components of rifles, rifled barrels, gas blocks being component parts of firearms, and bolt carriers being component parts of firearms; cleaning implements for firearms, namely, bore guides,” are related because they are commonly sold to the same consumers through the same trade channels.
The attached Internet evidence consists of printouts of webpages from stores selling both applicant’s and registrant’s goods.
1. CABELA’S
2. BASS PRO SHOP
· http://www.basspro.com/Apex-Gear-Covert-Pro-Bow-Sight/product/1504011009/ - Open bow sight;
· http://www.basspro.com/Tipton-RAPID-Deluxe-Bore-Guide-Kit/product/10207606/ - bore guide kit;
3. FIELD AND STREAM
· http://www.fieldandstreamshop.com/p/hha-sports-optimizer-lite-ultra-1-pin-019%E2%80%9D-sight/15hhauhhptmzrltxlabw - open bow sight;
· http://www.fieldandstreamshop.com/p/field---stream-sportsman-gun-cleaning-kit/15fnsufssprtsmngngua - gun cleaning kit.
4. DICKS SPORTING GOODS
· http://www.dickssportinggoods.com/family/index.jsp?categoryId=4414501 – bow sights;
· http://www.dickssportinggoods.com/family/index.jsp?categoryId=4414545&bc=CatGroup_ShootingSuppliesAccessories_R2_C3_GunCleaning – gun cleaning kits.
This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In sum, the similarities between the marks’ appearances, sounds, and overall commercial impressions combined with the close relationship between the goods results in a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.
Registration is refused because the specimen in International Class(es) 28 is mutilated, and thus does not clearly show the applied-for mark in use in commerce for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Specifically, applicant’s mark is mutilated because the specimen shows the mark as AMS SATURN, and the mark in the drawing is SATURN. SATURN does not create a separate commercial impression apart from AMS, such that it could be separated from AMS. Therefore, the specimen does not show use of the applied-for mark in commerce. Rather, it shows use of the AMS SATURN mark. A proper specimen would show use of the SATURN mark for the applied-for goods.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/S5.jsp.
SUBSTITUTE SPECIMEN INSTRUCTIONS
To properly sign an online form in the Trademark Electronic Application System (TEAS), applicant may use one of the following methods:
(1) SUBMIT E-SIGNATURE: The signer types in the signature block any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/). If the filer is not the actual signer of the form, the filer may e-mail the completed form from within TEAS to the signer to enter his or her direct e-signature, after which the form will be automatically returned to the filer for submission to the USPTO.
(2) ATTACH FILE OF PEN-AND-INK SIGNATURE: The filer prints the completed form in text format and mails or faxes it to the signatory who reviews the document and then signs the printed form in the traditional pen-and-ink manner. The signature portion, along with a declaration, if required, is then scanned to create a jpg or pdf image file and attached to the TEAS form for submission.
See 37 C.F.R. §2.193(c); TMEP §611.01(c).
Regardless of the selected method for signing the form, the signer must personally sign or personally enter his or her signature. See 37 C.F.R. §2.193(a); TMEP §§611.01(c), 611.02. The name of the signer must also be clearly printed or typed near the signature. 37 C.F.R. §2.193(d); TMEP §611.01(c). The signer’s particular title or position should also be specified. See TMEP §804.04.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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.
/Erica Jeung Dickey/
Examining Attorney
Law Office 112
571-270-3517
erica.dickey@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.