To: | COLT'S MANUFACTURING COMPANY LLC (TM-CT@cantorcolburn.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87304623 - COBRA - CFL0452TUS |
Sent: | 4/17/2017 11:21:39 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87304623
MARK: COBRA
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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: COLT'S MANUFACTURING COMPANY LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/17/2017
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On April 12, 2017, the trademark examining attorney and Curtis Krechevsky, Esq. discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
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. 0651917 (COBRA) and 1980765 (KING COBRA). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant seeks registration of the mark COBRA, with design, for “Firearms and parts thereof; guns and parts thereof; pistols and parts thereof; revolvers and parts thereof; handguns and parts thereof” in class 13.
Registrant’s marks and goods are as follows:
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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 seeks registration of the mark COBRA, with design, and registrant’s marks are COBRA, in stylized letters, and KING COBRA, in typed drawing.
In the first instance, the marks are confusingly similar because they are identical – COBRA. In the present case, applicant’s mark is COBRA and registrant’s mark is COBRA. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. In re i.am.symbolic, llc, 116 USPQ2d at 1411. Therefore, the marks are confusingly similar.
In the second instance, the marks are confusingly similar because of the common wording COBRA, also the only wording in applicant’s mark. Therefore, applicant’s mark is completely incorporated within registrant’s mark, and deletion of additional matter does not overcome a likelihood of confusion, particularly as the commercial appearance remains the same – that of a COBRA or snake. See attached definitions from The American Heritage Dictionary, showing that cobra and king cobra are types of venomous snakes. As such, the marks are confusingly similar because of the common, distinctive wording, COBRA, and the similarities of sound, appearance, and commercial impression.
In addition, with respect to both registered marks, applicant’s mark includes a design element. The design element in applicant’s mark is minimal as it includes the design of a snake that forms the letter C of the mark COBRA; the design of the snake is essentially synonymous with the wording COBRA. See previously attached evidence from The American Heritage Dictionary showing that COBRA is a type of venomous snake. Therefore, the design aspect of applicant’s mark does not create a new, unique, or different commercial impression that would overcome a likelihood of confusion when compared to the registered marks.
Therefore, the marks are confusingly similar because in the first instance, the marks are identical, and in the second, the marks are similar in appearance, sound, and commercial impression due to the common, distinctive wording COBRA.
Comparison of the Goods
Applicant’s goods are: “Firearms and parts thereof; guns and parts thereof; pistols and parts thereof; revolvers and parts thereof; handguns and parts thereof” in class 13.
Registrant’s goods are as follows:
Here, the goods are highly related, where not identical, as applicant and registrant provide firearms, guns, pistols, handguns, revolvers and parts thereof. Here, applicant’s and registrant’s identification includes no restrictions; therefore, without restriction, it is presumed that the goods will travel in the same channels of trade and will be marketed to the same class of consumers.
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 registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, applicant’s goods are worded broadly such that it is presumed to include registrant’s more narrow identification; e.g., applicant’s “firearms… guns… pistols… revolvers… and handguns” would include registrant’s “automatic pistols and revolvers,” and applicant’s “revolvers and parts thereof” would include registrant’s “spare parts and replacement parts for revolvers.”
As such, the goods and/or services of applicant and the registrant(s) are considered related for purposes of the likelihood of confusion analysis.
Conclusion
Because the marks are highly similar and the goods are highly related, consumers are likely to confuse the marks and the source of the goods. Here, when considered in their entireties, consumers are likely to mistakenly believe that applicant’s firearms, guns, pistols, revolvers, handguns, and related parts, stem from the same source as registrant’s firearms and parts, all provided under an identical or similar mark.
Based on the foregoing, the applicant’s proposed mark, COBRA, is refused for likelihood of confusion under Trademark Act Section 2(d).
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below. In addition, please see the advisory below concerning claiming ownership of cited registration(s).
Information about CLAIMING OWNERSHIP OF REGISTRATIONS
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 0651917 and 1980765.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
DESCRIPTION OF MARK – Clarification Required
Specifically, the mark description does not include a reference to the design element of the snake which forms the letter “C” in the mark “COBRA”. As such, the current mark description does not identify the design element of the mark.
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the word “COBRA” in stylized letters. A stylized design of a snake forms the letter “C” in “COBRA”.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
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 and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).
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 $125 per 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 or e-mail without incurring this additional fee.
/Jeane Yoo/
Examining Attorney
Law Office 120
(571) 272-5021
Jeane.Yoo@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.