To: | Hearst Communications, Inc. (trademarks@hearst.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87196735 - COSMOPOLITAN - 13170 |
Sent: | 12/2/2016 6:19:27 PM |
Sent As: | ECOM120@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 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87196735
MARK: COSMOPOLITAN
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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: Hearst Communications, 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: 12/2/2016
· Refusal under Trademark Act Section 2(d) – Likelihood of Confusion
· Advisory: Prior-Filed Application
· Requirement to Amend the Identification of Goods
· Requirement to Comply with the Multiple-Class Application Requirements
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASS 31 ONLY
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.
Comparing the Marks
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).
The marks in this case are confusingly similar because applicant’s mark is identical to the dominant element of registrant’s mark. Applicant’s mark is “COSMOPOLITAN” and registrant’s mark is “COSMOPOLITAN BOUQUET”. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
Furthermore, applicant creates its mark by deleting descriptive/generic wording from registrant’s mark. However, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark. Accordingly, the marks are confusingly similar.
Comparing the Goods
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] 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).
In this case, applicant’s goods are “dried flowers” in International Class 31. Registrant’s goods are “live flower arrangements” in International Class 31.
Applicant’s and registrant’s goods are related because they often emanate from a single source. For example, the attached Internet evidence consists of third-party entities that produce both dried flowers and live flower arrangements. See attached webpage screenshots featuring goods from Wallingford Farm, Hammelmans, Lilies of The Field, Terrain, and Flowers Art Antiques:
Wallingford Farm
http://www.wallingfordfarm.com/floral.htm
Hammelmans
http://www.hammelmans.com/Fresh-Flowers.html
http://www.hammelmans.com/Retail-Dried-Floral.html
Lilies Of The Alley
http://liliesofthealley.com/about-lilies-alley-traverse-city/dried-and-silk-collection-at-lilies-2/
Terrain
http://www.shopterrain.com/plants-bunches/farmgirl-flowers-fresh-cut-fall-bouquet
http://www.shopterrain.com/faux-preserved-dried/dried-nigella-bunch
Flowers Art Antiques
http://www.flowersartantiques.com/Floral-Design-Landscaping.html
This evidence establishes that provides the relevant goods and markets the goods under the same mark. 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).
Conclusion
Applicant’s and registrant’s marks are confusingly similar and their goods are related. Accordingly, the applied-for mark, “COSMOPOLITAN”, is refused for likelihood of confusion under Trademark Act Section 2(d).
ADVISORY: PRIOR-FILED APPLICATION
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 mark in the referenced application. 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.
REQUIREMENT TO AMEND IDENTIFICATION OF GOODS
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, hand soap, shampoo). TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id. However, colons and periods should not be used in an identification of goods. Id.
International Class 16
International Class 20
The wording “other storage receptacles” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass storage containers which are classified by the material composition. For example, paper storage containers are classified in International Class 16; nonmetal and non-paper storage containers are classified in International Class 20; and plastic storage containers are classified in International Class 21. Applicant may substitute the following wording, if accurate: “other storage receptacles in the nature of nonmetal and non-paper storage containers.”
The wording “jewelry organizers” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass jewelry organizer cases in International Class 14 and jewelry organizer displays in International Class 20. Applicant may substitute the following wording, if accurate: “jewelry organizer displays.”
The wording “wall and shelf art, namely, initials” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, works of art are classified by their material composition. For example, works of art made of stone, concrete, and marble are classified in International Class 19; works of art made of plastic, wood, wax, plaster, and nutshell are classified in International Class 20. Applicant may substitute the following wording, if accurate: “wall and shelf works of art, namely, alphabet initials made of wood, plastic, and plaster.”
The wording “shelving units” in the identification of goods is indefinite and must be amended to further specify the components of the unit. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “shelving units, namely, shelves and brackets sold as a unit.”
The wording “carts” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could include handling carts in International 12 and bar carts in International Class 20. Applicant may substitute the following wording, if accurate: “bar carts.”
The wording “magazine holders” in the identification of goods is indefinite and must be amended to further specify and clarify the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, these goods could include display stands and magazine racks. Applicant must specify the common commercial or generic name for the goods. Applicant may substitute the following wording, if accurate: “magazine holders, namely, magazine racks and display stands.”
International Class 21
The wording “baskets” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could include baskets of common metal in International Class 6; baskets of precious metal in International Class 14; desk baskets for desk accessories in International Class 16; and baskets for domestic use in International Class 21 just to name a few. Applicant may substitute the following wording, if accurate: “baskets for domestic use.”
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may adopt the following identification, if accurate:
International Class 6: Metal hooks; statuaries made of non-precious metal; wall and shelf works of art, namely, alphabet initials made of non-precious and common metal
International Class 14: Jewelry holders and jewelry boxes; statuaries made of precious metal; jewelry organizer cases
International Class 16: Desktop organizers; wall and shelf works of art, namely, alphabet initials made of paper
International Class 19: Wall and shelf works of art, namely, alphabet initials made of stone, concrete, marble, or clay
International Class 20: Crates and other storage receptacles in the nature of nonmetal and non-paper storage containers; organizers, namely, drawer organizers, jewelry organizer displays, non-metal fabric hanging organizers, and non-metal fabric bin organizers; wall and shelf works of art, namely, alphabet initials made of {applicant must specify International Class 20 materials, e.g., wood, plastic, and plaster}; shelves; shelving units, namely, shelves and brackets sold as a unit; non-metal hooks; desks; desk chairs; coat racks; desktop statuaries made of bone, ivory, plaster, plastic, wax, and wood; plant stands; accent tables; cabinets; wine racks; bar carts; magazine holders, namely, magazine racks and display stands; mirrors
International Class 21: Baskets for domestic use, laundry baskets; wall and shelf works of art, namely, alphabet initials made of {applicant must specify International Class 21 materials, e.g., china, crystal, ceramic, glass, porcelain}
The identifications of goods in International Class 31 are acceptable as written.
REQUIREMENT TO COMPLY WITH 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 that are classified in at least 7 classes; however, applicant submitted fees sufficient for only 6 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.
Fees For Additional Classes
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). For information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by TEAS and in a paper submission, please go to http://www.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.
RESPONSE GUIDELINES
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and/or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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. 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 or e-mail without incurring this additional fee.
/Marco Wright/
Trademark Examining Attorney
Law Office 120
(571) 272-4918
marco.wright@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.