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.  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: 1/16/2018

 

THIS IS A FINAL ACTION.

 

This communication responds to applicant’s response dated December 18, 2017.

 

In addition, the following refusal(s) and/or requirement(s) have been withdrawn: likelihood of confusion as to 4881733 for SOLUTIONS by Nature.  See TMEP §§713.02, 714.04.

 

SUMMARY OF ISSUES that applicant must address:

 

• Likelihood of Confusion.

Likelihood of Confusion:

The applicant applied to register the mark: "SOLUTION" for feed supplements for horses and mineral nutritional supplements for horses in Int. Class 5 and horse feed in Int. Class 31.

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2661106 for “SOLUTIONS” for nutritional products for livestock, namely, vitamins, minerals, vitamin-mineral premixes, electrolytes and amino acids; feed supplements, namely, fats, starches and milk replacers in Int. Class 5 and non-medicated dry fat feed additive for calves; animal feed in Int. Class 31. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

SOLUTION vs. SOLUTIONS

Applicant was informed the marks in question have the same term “SOLUTION/S” in them therefore giving the marks the same commercial impression of the act of solving a problem or question. Additionally the parties feature nutritional products and feed for animals. The trademark examining attorney refers to the previously excerpted materials from the BING search engine in which providers of animal feed and animal supplements are provided under the same name.  See previous attachments.

The applicant disagrees and argues: the applicant’s dates of use precede the registration; there are no actual instances of confusion; applicant’s mark has become incontestable; the stylizations are different; the applicant refers to five other registrations.

 

The trademark examining attorney has considered applicant’s arguments carefully and found them unpersuasive for the reason(s) below.

 

The applicant argues that applicant's dates of use precede the cited registration. However a review of the record shows that the date of use for Registration Number 2661106’s is July 6, 1999, whereas applicant’s prior registration has dates of use of August 28, 2008, which is a later date of use than the registrant. The registrant’s date precedes applicant’s prior registration according to the PTO database.

 

Applicant also states that there are no actual instances of confusion. Any suggestion that there has been no actual confusion between the marks, based on the coexistence of applicant's previously issued registrations and the cited registration, is entitled to little probative value. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205.

 

The applicant also states that its mark has become incontestable. Applicant’s prior registration is not in question in this application. Additionally, the registrant’s mark is also incontestable.

 

The applicant states the stylizations are different. Clearly there are some differences in the stylization of applicant's mark and the cited mark. The registered mark is shown in an upper and lower case non-cursive solid letters. The applicant’s mark is a cursive outlined format. However, merely because applicant's mark has a stylization does not mean that consumers will regard this stylization as indicating a source different from the source of the registrant's goods. The commercial impression of the marks is the same, that of the term SOLUTION(S). Although consumers may note that the letters in applicant's mark are more stylized than the letters in the cited mark, they are likely to view the two marks as variations of each other, with both indicating a single source.

 

The stylization of the marks is not so distinctive or compelling that consumers would view them as identifying different sources of the goods. As a general rule, when a mark consists of both a word and a design, the word is normally accorded greater weight because the word would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That principle applies in this case, where applicant's mark does not have a separate design, but merely some stylization to the lettering. Consumers will refer to it as SOLUTION(S), not the mark cursive mark.

 

The applicant also refers to five other registrations. As for the third-party registrations' showing ownership by different entities of essentially the same marks for similar, highly or identical goods/services, these registrations cannot be used as reflecting a Patent and Trademark Office recognition that there is no likelihood of confusion if the same mark is used on similar, highly or identical goods/services. There is no way of knowing what the circumstances were under which the later-filed applications were accepted; for example, the prior registrants may have consented to the registrations. Apart there from, it is noted that the one is not bound by the findings or mistakes of other Examining Attorneys.

 

Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations appear to be for goods and/or services that are predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; see Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982).  Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording SOLUTION(S) is weak or diluted. 

 

Further, evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751)).  Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording is weak or diluted. 

 

An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

The applicant does not argue the goods are different.

 

Remedies for Final Action:

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

 

 

/LDA/

Lourdes Ayala, Attorney at Law

Law Office 106

Telephone Number 571-272-9316

Fax: 571-272-9106

Lourdes.Ayala@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 1/16/2018 FOR U.S. APPLICATION SERIAL NO. 87377290

 

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 1/16/2018 (or sooner if specified in the Office action).  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.  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 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.