UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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. 

 

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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1312862 and 2523932.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

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.

 

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined 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 Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS

 

Applicant has indicated use of its mark on goods consisting of a “full line” of products.  Because full line marks are used on such a large number and/or variety of goods, upon filing an amendment to allege use or statement of use, applicant will be required to provide evidence to substantiate use of the mark on a full line of products.  TMEP §1402.03(c); see 37 C.F.R. §2.61(b).  Such evidence may comprise product catalogs or similar evidence showing broad use of the mark for a majority of the goods in the “full line.”  See TMEP §1402.03(c). 

 

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). 

 

The identification of goods is indefinite and must be clarified because mostly nebulous terms are used that fail to limit the goods to a single class, or to clearly identify goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Note that many types of goods can be acceptably identified using relatively broad terms without need for the burden of proof required for “a full line” of such goods.  Applicant may adopt the following identification, if accurate: 

 

“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.

 

Applicant must rewrite the identification of goods and services in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(a).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

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

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 86852696 and 86852768 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/2/2016 FOR U.S. APPLICATION SERIAL NO. 86876782

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/2/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.