UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 87309904
MARK: EUREKA
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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: Springfield Group Limited
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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. 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: 4/26/2017
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
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.
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 applicant’s proposed mark, “EUREKA” and design is likely to be confused with the registered marks identified below.
Comparing the applicant’s mark with the marks in the following U.S. Registrations:
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In this case, the applicant’s mark consists of the term EUREKA along with the design of a flower. Consumers are likely to use the literal element, EUREKA, when discussing and requesting the applicant’s goods and/or services in commerce. Therefore, the dominant element of the mark is the term EUREKA.
Similarly, the literal element EUREKA! is the dominant element of the mark in Registration No. 4511576, as it is what consumers will use when discussing and requesting the registrant’s goods in commerce.
The dominant element of the applicant’s mark is identical to the literal element in Registrations No. 4783496; 3713699; 4831317; 1550320; 1716374. The marks are therefore 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). Further, the marks are similar in meaning, as they all contain the dominant element EUREKA.
This dominant element is also highly similar to the dominant element of Registration No. 4511576 and 1678769, EUREKA!. 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). Further, the marks are similar in meaning, as they all contain the dominant element EUREKA. The fact that the registrants’ marks contain an exclamation point does not obviate a finding of similarity; as the meaning and the sound of the marks remain the same, and the visual change is very minor.
Taken together, the marks are confusingly similar.
Comparing the applicant’s mark with the marks in the following U.S. Registrations:
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In this case, the applicant’s mark consists of the term EUREKA along with the design of a flower. Consumers are likely to use the literal element, EUREKA, when discussing and requesting the applicant’s goods and/or services in commerce. Therefore, the dominant element of the mark is the term EUREKA.
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 and/or services 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). In this case, each of the registrations identified above contains wording that has been disclaimed as descriptive of the identified goods and/or services. The dominant wording in each of the marks remains EUREKA, as this is the element of each of the above marks that consumers will use to identify the source of the associated goods and/or services.
The fact that applicant has deleted this matter from its mark does not avoid a finding of similarity. 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 marks, and there is no other wording to distinguish it from the registered mark.
Therefore, the marks are confusingly similar.
Comparing the applicant’s mark with the marks in the following U.S. Registrations:
For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In this case, the applicant’s mark consists of the term EUREKA along with the design of a flower. Consumers are likely to use the literal element, EUREKA, when discussing and requesting the applicant’s goods and/or services in commerce. Therefore, the dominant element of the mark is the term EUREKA.
This is confusingly similar to the wording in the above-referenced registered marks. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). 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).
In this case, the shared term EUREKA is the first word in each of the registered marks. The fact that applicant has deleted the additional matter in these marks does not avoid a finding of similarity. Consumers are likely to believe that these EUREKA-formative marks identify goods and/or services that emanate from a common source.
Therefore, the marks are confusingly similar.
Comparing the Goods and Services
The applicant’s goods and/or services are identified as follows:
International Class 3: cosmetics, essential oils, perfumes
International Class 30: biscuits, bread, candy, cereal preparations, chocolate, cocoa, coffee, condiments, confectionery, desserts (confectionery), dumplings, farinaceous foods, food mixes for making desserts (confectionery), herbal tea (other than for medical use), honey, ice cream, sugar, sauces (condiments), slimming tea, not for medical purpose, tea
International Class 35: advertising, arranging commercial exhibitions and trade fairs, convenience store retailing service, distributorship of food and beverage, mail ordering services, market analysis and research, merchandising, online retailing, wholesaling and distributorship, outsourcing, presentation of goods on communication media for retail purposes, promotion, public relations, purchasing goods and services on behalf of others, retailing of food and beverage, wholesaling of good and beverage, window display arrangement services
See application.
The registrants’ goods and services are identified in the chart below:
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Serial Number |
Owner |
Mark |
Goods/Services |
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4785281 |
Eureka Leather, Inc. |
EUREKA LEATHER |
“Export and import agencies in the field of leather and leather hides; Wholesale services through direct solicitation by distributors directed to end-users featuring leather and leather hides” in Class 35. |
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4783496 |
Yurrku, LLC. |
EUREKA |
“Body and beauty care cosmetics; Cosmetic nourishing creams; Cosmetic preparations; Cosmetics; Cosmetics in the form of milks, lotions and emulsions; Face and body beauty creams; Non-medicated preparations all for the care of skin, hair and scalp” in Class 3. |
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3356287 |
Technical Communities, Inc. |
EUREKASPOT and design |
“On-line trading services in which seller posts items and bidding is done electronically providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, delivery, and overall trading experience in connection therewith” in Class 35. |
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3663627 |
Madre Labs, Inc. |
EUREKA! BERRIES |
“Dietary and nutritional supplements” in Class 5 |
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3713699 |
Eureka Puzzles, Inc. |
EUREKA |
“Wholesale stores featuring games, gifts, puzzles, jigsaw puzzles, mechanical puzzles, toys, souvenirs; Retail stores featuring games, gifts, puzzles, jigsaw puzzles, mechanical puzzles, toys, souvenirs; On-line retail store services featuring games, gifts, puzzles, jigsaw puzzles, mechanical puzzles, toys, souvenirs” in Class 35 |
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4831317 |
Bimbo Bakeries USA, Inc. |
EUREKA |
Bread, in Class 30 |
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4511576 |
Bimbo Bakeries USA, Inc. |
EUREKA! And design |
Bread, in Class 30 |
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4448756 |
Bimbo Bakeries USA, Inc. |
EUREKA BAKING COMPANY |
Bread, in Class 30 |
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4022242 |
Eureka Systems Corp. |
EUREKA PIZZA |
“Food preparation services featuring pizza, bread sticks, and sauces except hot sauces; restaurant services featuring delivery, carry-out, and catering” in Class 43 |
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3415076 |
Guittard Chocolate Company |
EUREKA WORKS |
Chocolate, in Class 30 |
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1550320 |
Dairy Farmers of America, Inc. |
EUREKA |
Cheese, in Class 29 |
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4623815 |
Eureka! Institute, Inc. |
EUREKA! INVENTING |
“Business consultation services; Market research” in Class 35 |
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3900736 |
Eureka! Institute, Inc. |
EUREKA! RESEARCH INTERNATIONAL |
“market research services” in Class 35 |
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4084567 |
Eureka! Institute, Inc. |
EUREKA! JUMP START |
“market research services” in Class 35 |
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3493869 |
Eureka! Institute, Inc. |
EUREKA! RANCH INNOVATION ENGINEERING |
“Business consulting regarding marketing activities and launching of new products” in Class 35 |
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3887842 |
Eureka! Institute, Inc. |
EUREKA! TRIZ |
“Business consulting services in the field of providing product development and innovation” in Class 35 |
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4179678 |
Eureka! Institute, Inc. |
EUREKA! RESEARCH |
“market research services” in Class 35 |
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2239589 |
Eureka! Institute, Inc. |
EUREKA! RANCH |
“business marketing services” in Class 35 |
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2011394 |
Eureka! Institute, Inc. |
EUREKA! GAME PLAN |
“business marketing consulting services” in Class 35 |
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1997908 |
Eureka! Institute, Inc. |
EUREKA! BLITZ |
“business marketing consulting services” in Class 35 |
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1716374 |
Eureka! Institute, Inc. |
EUREKA |
“business consulting services for creating, implementing and marketing business products and services” in Class 35 |
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1678769 |
Eureka! Institute, Inc. |
EUREKA! |
“market research services” in Class 35 |
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2365173 |
Eureka! Institute, Inc. |
EUREKA! RANCH WICKED GOOD SAUCE |
Hot sauce, in Class 30 |
The respective goods and/or services 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).
International Class 3:
Absent restrictions in an application and/or registration, the identified goods 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 No. 4783496 have 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 use(s) broad wording, cosmetics to describe the goods and this wording is presumed to encompass all goods of the type described, including those in the registrant’s more narrow identification.
Further, with respect to the goods identified in connection with Registration No. 3663627, attached Internet evidence consists of screenshots from the websites identified below. This evidence establishes that provides the relevant goods and markets the goods under the same mark and that they are provided in the same channels of trade to the same types of consumers. 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).
International Class 30:
Absent restrictions in an application and/or registration, the identified goods 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 travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrations’ No. 4831317; 4511576; 4448756, (all “bread”) more narrow identification. Similarly, the wording “confectionery” in the application encompasses the wording in Registration No. 3415076, “chocolate.” Lastly, the wording “sauces (condiments)” in applicant’s identification encompasses the goods identified in Registration No. 2365173, “hot sauce.”
Further, with respect to the goods and services provided in connection with Registrations No. 4022242; 1550320; 2365173, the attached Internet evidence consists of screenshots from the websites identified below. This evidence establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark. Therefore, applicant’s and registrant’s goods and/or services 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).
International Class 35:
Absent restrictions in an application and/or registration, the identified 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, the application use(s) broad wording, “market analysis and research,” to describe the services and this wording is presumed to encompass all services of the type described, including those in the more narrow identifications of Registrations No. 3900736; 4084567; 4623815; 4179678; 1678769.
Similarly, the wording “online retailing, wholesaling, and distributorship” is broad enough to encompass the services identified in Registrations No. 3713699, 3356287, and 4785281.
Further, the attached Internet evidence consists of screenshots from the websites identified below. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark and that the services 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 services 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).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Accordingly, the applicant’s proposed mark, EUREKA and design, is refused for likelihood of confusion under Trademark Act Section 2(d).
Applicant should note the following additional grounds for refusal.
NOTICE OF PRIOR PENDING 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 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.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of Applications Serial No. 87237065; 87237060; 85910410; 87163255; 86258059. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIRED
General Identification Guidelines
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services 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 or services 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 and/or services. Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Specific Issues
International Class 30:
The wording “cereal preparations” “condiments” “confectionery” “desserts (confectionery)” “farinaceous foods” “dumplings” “food mixes for making desserts (confectionery)” “sauces (condiments)”in the identification of goods is indefinite and must be clarified because it does not identify the common commercial name of the goods produced with the required level of particularity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant should insert the word “namely” after these entries and list the common commercial name of the particular goods thereafter. Additionally, applicant must remove or incorporate the parenthetical wording into the identification of goods. See TMEP §1402.12.
Suggested wording that applicant may adopt, if accurate, has been suggested below.
International Class 35:
The wording “advertising” must be clarified to indicate that these are services provided to others, e.g., advertising services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “arranging commercial exhibitions and trade fairs” should be amended to identify the field in which these trade fairs and exhibitions are conducted, or their purpose e.g., for commercial or advertising purposes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “convenience store retailing service” is unclear and must be amended to clarify whether applicant provides a retail convenience store, or whether applicant provides a separate retailing service to convenience stores. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “mail ordering services” to indicate the featured goods, e.g., mail order services featuring magazines, clothing, and jewelry. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “merchandising” to indicate the type of services being provided, e.g., product merchandising for others, or business merchandising display services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “online retailing, wholesaling and distributorship” to indicate the field of products featured in these services, e.g., online retail services featuring bakery goods; wholesaling and distributorship services in the field of prepared foods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “promotion” is indefinite and must be amended to clarify the nature of the services being provided, e.g., sales promotion. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “retailing of food and beverage” should be amended to indicate the manner in which the retailing services are provided, e.g., retail store services featuring food and beverages. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “wholesaling of good and beverage” should be amended to indicate the type of goods featured, e.g., cooking supplies, as well as the manner in which the wholesaling services are provided, e.g., wholesale store services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following wording, if accurate:
International Class 3: cosmetics; essential oils; perfumes
International Class 30: biscuits; bread; candy; cocoa; chocolate; coffee; honey; ice cream; sugar; tea; slimming tea, not for medical purposes; herbal tea, other than for medical use; cereal preparations, namely, {please specify, e.g., crackers}; confectionery, namely, {please specify, e.g., confectionery made of sugar}; desserts, namely, {please specify, e.g., tarts}; farinaceous foods, namely, {please specify, e.g., pasta}; dumplings, namely, {please specify, e.g., shrimp dumplings}; food mixes for making desserts, namely, {please specify, e.g., cake mixes}; sauces
International Class 35: advertising; arranging commercial exhibitions and trade fairs for commercial or advertising purposes; Retail convenience stores; distributorship services in the field of food and beverages; mail ordering services featuring magazines, clothing, and jewelry; market analysis and research services; product merchandising for others; online retail services featuring bakery goods; wholesaling and distributorship services in the field of prepared foods; outsourcing services; presentation of goods on communication media for retail purposes; sales promotion; public relations; purchasing goods and services on behalf of others; retail store services featuring food and beverages; wholesale store services in the field of cooking supplies and beverages; window display arrangement services
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
ASSISTANCE
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.
/Diane Collopy/
Examining Attorney
Law Office 107
diane.collopy@uspto.gov (informal communications only)
(571) 270-3118
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.
