To: | Brong, Jon (endof1981@yahoo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87405252 - CACHE - N/A - Request for Reconsideration Denied - No Appeal Filed |
Sent: | 9/18/2017 11:34:59 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87405252
MARK: CACHE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Brong, Jon
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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REQUEST FOR RECONSIDERATION DENIED
ISSUE/MAILING DATE: 9/18/2017
The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a). The following refusal made final in the Office action dated 8/21/2017 are maintained and continue to be final: SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL. See TMEP §§715.03(a)(ii)(B), 715.04(a).
In the present case, applicant’s request has not resolved all the outstanding issue, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue in the final Office action. Specifically, applicant’s request for reconsideration consists solely of a request to amend the mark from “CACHE” to “CARRY CACHE”. Applicant is advised that such an amendment is not allowed because an amendment to a mark will not be accepted if the change would materially alter the mark in the initial application. 37 C.F.R. §2.72; TMEP §807.14. Determining whether a proposed amendment materially alters a mark involves comparing the proposed amended mark with the mark in the drawing filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(d).
The test for material alteration is whether the modified mark retains what is the essence of the original mark; that is, whether the new and old forms create the impression of being essentially the same mark. In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14. For example, if republication of the amended mark would be necessary to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ at 743-44). Also, the addition of an element that would require a further search may be a factor in determining material alteration. In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012); In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).
In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application. TMEP §807.17; see 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (holding proposed amendment from “TACILESENSE” to “TACTILESENSE” to be material alteration due to the difference in meaning or connotation between the marks); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to the typed word TURBO to be a material alteration due to the design being distinctive matter). Specifically, the proposed amendment would materially alter the mark in the initial application because the added term “CARRY” provides the added commercial impression that applicant offers something that may be carried; an added commercial impression which is not present in the original mark, “CACHE”. Accordingly, the proposed amendment will not be entered as a prohibited amendment, and the previous drawing of the mark remains operative. TMEP §807.17.
As the evidence of record demonstrates, the applied-for mark and registered mark are confusingly similar, and the parties’ goods are closely related such that consumers are likely to confuse the source of the parties’ goods when offered under the marks as issue. Moreover, applicant does not dispute the marks are confusingly similar, and that the goods at issue are closely related. Therefore, the refusal to register the mark under Section 2(d) of the Trademark Act is maintained and continues to be FINAL.
Accordingly, the request is DENIED.
INFORMATION REGARDING APPEALS
If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
/Tiffany Y. Chiang/
Trademark Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@uspto.gov