To: | Leader Drugstores, Inc. (tmdocket@arentfox.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86876782 - LEADER - 032828.01574 |
Sent: | 5/2/2016 5:39:03 PM |
Sent As: | ECOM101@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. 86876782
MARK: LEADER
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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: Leader Drugstores, Inc.
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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: 5/2/2016
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The cited LEADER marks are registered for shampoo, goggles, eyeguards, swim caps, and various clothing items. The applicant seeks to register LEADER for a full line of hair products, a full line of eye care products, hosiery; socks; footwear; footwear cushioning; insoles, and a full line of products for exercise and physical fitness. The applicant’s broadly identified goods encompass the more narrowly defined goods of the registrants. Since the marks are identical or nearly so, consumers would likely believe the goods are from the same source.
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.” 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 and/or services 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 registrations 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 services and this wording is presumed to encompass all goods and services of the type described, including those in registrants’ more narrow identification.
Failure to establish sufficient broad use may result in refusal of registration. See In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1999) (use of the mark on only three products was insufficient to show use for a “full line” of products); TMEP §1402.03(c). If applicant cannot provide such evidence, applicant will be required to amend the identification to (1) delete “full line of” and (2) specify the common commercial or generic name for each item, if not already specified. See TMEP §§1402.01, 1402.03(c).
“Cleaning agents and preparations; douching preparations for personal sanitary or deodorant purposes; disposable wipes impregnated with cleansing chemicals or compounds for personal hygiene; non-medicated preparations all for the care of skin, hair and scalp; baby bubble bath, hair conditioner, lotion, oil, powder, shampoo, wipes and wipes cases; hair care preparations; feminine deodorant sprays and suppositories; feminine hygiene cleansing towelettes; non-medicated feminine hygiene wash; after-shave; pre-shaving preparations; shaving preparations; nail grooming products, namely, tips, glue, lacquer and glitter; dentifrices and mouthwashes; non-medicated sun care preparations; cosmetics and cosmetic preparations,” in class 3;
“Pharmaceutical preparations and substances for the treatment of infectious diseases, blood disorders, digestive disorders, pain, inflammation, sepsis, alopecia, obesity and cognitive disorders; analgesics; natural sleep aid preparations; natural remedy preparations for the treatment of gastro-intestinal conditions, hormonal and chemical imbalances, and sleep disorders; dietary supplement beverage for aiding sleep, promoting digestion and relieving digestive distress; motion sickness treatment preparations; digestives for pharmaceutical purposes; hemorrhoid preparations; baby diapers and foods; medicated baby oils and powders; preparations for treating colds; vaccines against flu; non-medicated topical gel for the prevention and treatment of cold and flu; allergy medications; medicinal tea used for the treatment of chest congestion; medicated skin care preparations; pharmaceutical preparations and substances for the treatment of viral, metabolic, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, psychiatric and immune system related diseases and disorders; weight management supplements; anti-diabetic preparations; nutritional supplements for boosting energy; medicaments for promoting recovery from tendon and muscle injuries and disorders and sports related injuries; topical first aid gel; first aid kits; bone repair paste for use in orthopedic surgery; medicated compresses; eye compresses; eye drops; eye patches for medical purposes; eye washes; ear bandages and drops; contraceptive preparations; feminine hygiene pads; disinfectants for hygiene purposes; antiparasitics; pharmaceutical preparations and substances for the treatment of damaged skin and tissue; medicated foot powder; corn rings for the feet; athletes' foot preparations; medicated hair care preparations; medicinal hair growth preparations; homeopathic anti-inflammatory ointment; homeopathic supplements; oral analgesics; oral spray for the cessation of smoking; oral vaccine preparations; pharmaceutical preparations, namely, a drug delivery system comprising polymer-based oral tablets for the continuous release of a wide variety of therapeutic agents; smoking cessation preparations; medicated sun care preparations; vitamins; medicinal herbs; plant extracts for pharmaceutical purposes; incontinence garments and pads,” in class 5;
“Bathtub grab bars of metal,” in class 6;
“Electric and non-electric shavers; shaving blades and cases; razors; electric and battery-powered hair trimmers; electric hair cutters; electric hair straightener; Electrolysis apparatus for hair removal,” in class 8;
“Eyewear; cases for eyeglasses and sunglasses; contact lenses,” in class 9;
“Compression bandages and garments; surgical compresses; therapeutic compression wraps; manually-operated exercise equipment for physical therapy purposes; manually-operated resistance bands and tubing for physical therapy purposes; baby bottle nipples; baby bottles; baby nursers; cups and dishes adapted for feeding babies; medical apparatus for diagnosing or treating respiratory conditions; respiratory masks for medical purposes; medical test kits for diabetes monitoring for home use; socks for diabetics; contraceptive apparatus; disposable finger fitting polyethylene sleeves for hygienic insertion of a tampon; foot massage apparatus; orthotics for feet; apparatus for acupressure therapy; dental caps, crowns, chairs, dams, drills, excavators, gloves, handpieces, inlays, onlays, mirrors, picks and prostheses; medical apparatus, namely, therapeutic devices for delivering specifically engineered pressure and gas mixtures for medical benefit; post-operative pressure garments; medical and surgical apparatus and instruments, namely, devices used in orthopedic surgery to position surgical instruments, implants and/or patients' limbs; medical apparatus, namely, ladder-type device to assist physically disabled individuals in transferring from one position to another; arch supports for footwear; back supports for medical purposes; orthopedic supports; enteral feeding pumps; intravenous feeding bottles and tubes; medical apparatus for intravenous administration of fluids, namely, fluid warmers; gloves for use in hospitals; hospital beds for use by burn patients; hospital gurneys; rolls of paper for covering examination tables used in hospitals; furniture especially made for medical purposes; walkers to aid in mobility; incontinence bed pads and sheets,” in class 10;
“Child safe protective covers for bathtub spouts; portable foot baths; side-entry baths,” in class 11;
“Wheelchairs,” in class 12;
“Paper towels; toilet paper; facial tissue; stationery writing paper and envelopes,” in class 16;
“Bathtub grab bars not made of metal; hospital beds; furniture for use in hospitals,” in class 20;
“Dental floss; dental floss picks; dental tape; oral hygiene devices, namely, interdental cleaners; toothbrushes; toothpicks; toothbrush holders,” in class 21;
“Hosiery; socks; footwear; polymer custom cushioned shoe inserts for primarily non-orthopedic purposes; insoles,” in class 25;
“Exercise machines, platforms, tables and weights; personal exercise mats; manually-operated exercise equipment for physical fitness purposes; fitness equipment, namely, straps used for yoga and other fitness activities and for carrying a yoga mat; athletic supporters and tape; elbow, knee, leg, shin and wrist guards for athletic use; shoulder pads for athletic use; Athletic equipment, namely, striking bags and shields; protective athletic cups; sport balls,” in class 28;
“Retail store services featuring a wide variety of consumer goods of others,” in class 35.
ONLINE ID MANUAL
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. See TMEP §1402.04.
USPTO DISCRETION
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 14 classes; however, applicant submitted a fee(s) sufficient for only 12 classes. 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.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) 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.
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 marks in the referenced applications. 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.
/Ira Goodsaid/
Examining Attorney
Law Office 101
571-272-9166
ira.goodsaid@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.