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. 87406031
MARK: NOBLE
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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: NOBLE PARTNERS LTD.
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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: 7/6/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 marks in the referenced applications. 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.
II. 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. 3848163, 2512356, 2290269, 4672100, 4319847, 5177948, 2515631, 3078031, 3943146, 4694320, 4710136, 2359452, 4266203, 4508513, 4292683, and 3960897. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant’s proposed mark is “NOBLE” (standard character) used in connection with:
Class 26: Lace; embroidery; ribbons; braid; buttons; hooks and eyes; pins; needles; artificial flowers
Class 41: education, teaching and training; entertainment services; arranging and conducting of workshops and seminars; arranging and conducting of congresses; organization of exhibitions for cultural and educational purposes; publication of electronic books and journals online
The registrants’ marks are:
1. U.S. Registration No. 3848163*, “BARNES & NOBLE” (special form) used in connection with:
Class 41: entertainment in the nature of providing online book reviews and interviews with authors; educational services, namely, providing interactive educational classes, seminars, conferences, lectures and workshops in the fields of k-12, post-secondary, post-graduate, professional, vocational, workplace and continuing education and distributing course materials in connection therewith, via a global computer information network
2. U.S. Registration No. 2512356*, “BARNES & NOBLE.COM” (standard character) used in connection with:
Class 41: ENTERTAINMENT IN THE NATURE OF PROVIDING ONLINE BOOK REVIEWS, INTERVIEWS WITH AUTHORS, PERSONAL RECOMMENDATIONS, GIFT IDEAS, AND BESTSELLER LISTS, ALL RELATED TO BOOKS, MAGAZINES, SOFTWARE, MUSIC AND GENERAL GIFTWARE ITEMS; EDUCATIONAL SERVICES, NAMELY, PROVIDING INTERACTIVE EDUCATIONAL CLASSES, SEMINARS, CONFERENCES, LECTURES AND WORKSHOPS IN THE FIELDS OF K-12, POST-SECONDARY, POST-GRADUATE, PROFESSIONAL, VOCATIONAL, WORKPLACE AND CONTINUING EDUCATION AND DISTRIBUTING COURSE MATERIALS IN CONNECTION THEREWITH, VIA A GLOBAL COMPUTER INFORMATION NETWORK
3. U.S. Registration No. 2290269*, “BARNESANDNOBLE.COM” (standard character) used in connection with:
Class 41: Entertainment in the nature of providing online book reviews, interviews with authors, personal recommendations, gift ideas, and bestseller lists, all related to books, magazines, and general giftware items
4. U.S. Registration No. 4672100*, “BARNES & NOBLE RECOMMENDS” (standard character) used in connection with:
Class 41: Book and reading club services and on-line book and reading club services, namely, arrangement and formation of social events, get-togethers, and parties for club members; book and reading club services and on-line book and reading club services, providing a web-based system and online portal for providing users with informed suggestions of consumer products and services validated by the inputted preferences and social network of the user and providing users with exclusive personalized suggestions on books, electronic books, authors, book subject matter, book genres, music, videos and digital media entertainment all for non-business and non-commercial transactions and purposes, but for entertainment and educational purposes
5. U.S. Registration No. 4319847*, “BARNES & NOBLE” (standard character) used in connection with:
Class 41: Online electronic publishing of books, electronic books, magazines, newspapers, text and images on a variety of topics, namely, graphic novels, comics, picture books, teen fiction, horror and suspense, mystery and crime, music, movies, television, entertainment and popular culture, poetry, romance, school life, science fiction and fantasy, thrillers and westerns, African Americans, antiques and collectibles, art, architecture and photography, bibles and bible studies, biography, business and personal finances, Christianity, computers and technology, cookbooks, food and wine, crafts and hobbies, education and teaching, engineering, English, entertainment, foreign languages, games, gay and lesbian, health, diet and fitness, history, home and garden, humor, Judaism and Judaica, law, medical and medicine, military history, new age and spirituality, parenting and family, pets, philosophy, political and current events, psychology and psychotherapy, reference, religion, science and nature, self-help and self improvement, sex and relationships, social sciences, sports and adventure, study guides and test preparation, travel, true crime, weddings and women's studies; lending and sharing of electronic books and other electronic publications; providing a website featuring non-downloadable electronic publications, namely, book reviews, news and web articles on children's books, various current events topics, events that occurred on this date in history, humor and blogs on electronic book readers and books; providing information on education and entertainment information via a web site; online publications, namely, blogs on electronic book readers, books, electronic publications, authors, news, children's books and humor. providing a website featuring non-downloadable electronic publications, namely, books, newspapers, and magazines on a variety of topics, namely, graphic novels, comics, picture books, teen fiction, horror and suspense, mystery and crime, music, movies, television, entertainment and popular culture, poetry, romance, school life, science fiction and fantasy, thrillers and westerns, African Americans, antiques and collectibles, art, architecture and photography, bibles and bible studies, biography, business and personal finances, Christianity, computers and technology, cookbooks, food and wine, crafts and hobbies, education and teaching, engineering, English, entertainment, foreign languages, games, gay and lesbian, health, diet and fitness, history, home and garden, humor, Judaism and Judaica, law, medical and medicine, military history, new age and spirituality, parenting and family, pets, philosophy, political and current events, psychology and psychotherapy, reference, religion, science and nature, self-help and self improvement, sex and relationships, social sciences, sports and adventure, study guides and test preparation, travel, true crime, weddings and women's studies; providing non-downloadable prerecorded music all on-line via a global computer network; entertainment services, namely, providing temporary use of non-downloadable computer games in a variety of fields; Entertainment in the nature of providing online book reviews, personal recommendations and interviews with authors; providing a web site featuring information on books, book reviews, celebrities, publishing, entertainment news, book covers, book jacket designers, authors and book collectors. educational services, namely, providing interactive educational classes, seminars, conferences, lectures and workshops via a global computer information network in the fields of preschool, elementary, middle school, college and post-graduate subjects, namely, math, algebra, calculus, trigonometry, geometry, chemistry, organic chemistry, biology, microbiology, physics, astronomy, computer science, geology, history, psychology, philosophy, economics, film, health, art history, language, English, ESL, sign language, Spanish, French, Italian, German, Hebrew, Japanese, Chinese, Latin, law, anatomy, medicine, nursing, music, marketing, macroeconomics, accounting, mythology, women's studies, sociology, test preparation and SAT test preparation and distributing course materials in connection therewith; entertainment services, namely, an on-going multimedia series provided via a web site featuring information on books, book reviews and publishing and entertainment news, book covers, book jacket designers, authors and book collectors; book publishing services; online electronic publishing of e-books, magazines, newspapers, and other electronic publications in digital format
6. U.S. Registration No. 5177948, “BERROCO NOBLE” (standard character) used in connection with:
Class 23: Yarn for hand knitting, sold in specialty yarn shops
7. U.S. Registration No. 2515631, “NOBEL BIOCARE” (standard character) used in connection with:
Class 41: education and training services, namely, arranging and conducting seminars about implantation surgery and implantation techniques
8. U.S. Registration No. 3078031, “NOBEL PRIZE” (standard character) used in connection with:
Class 41: Educational services, namely, arranging and conducting seminars, lectures, exhibitions, conferences, congresses, seminars and symposiums for cultural and educational purposes in the field of science, health, human and political relations and economics; electronic publishing, namely, publication of texts and graphic works of others on CD-ROMs, DVDs and the Internet featuring science, health, human and political relations and economics; motion picture film production; production of radio and television programs; publication of textbooks; publication of books and textbooks
9. U.S. Registration No. 3943146, “NOBLE” (special form) used in connection with:
Class 26: False hair; false beards; false moustaches; toupees; hair bands; hair grips and slides; hair ornaments; hair nets; bows for the hair
10. U.S. Registration No. 4694320, “NOBLE CENTER” (standard character) used in connection with:
Class 41: Educational services, namely, conducting informal on-line programs intended to allow students to develop programs in the field of advocacy, education, mentoring and tutoring through use of media and outreach in impoverished communities, and printable materials distributed therewith; providing motivational and educational speakers
11. U.S. Registration No. 4710136, “NOBLE DENTON” (standard character) used in connection with:
Class 41: Training of seafarers' staff according to STCW (seafarers' training, certification and watch keeping) standards; setting of training standards, namely, developing curriculum for others in the field of maritime occupational health, safety rules and product quality, maritime shipping and transport rules and regulations including technical rules and regulations that pertain to the exploration, production or transport of fossil fuels and renewable energy, and developing technical educational manuals for others regarding guidelines for the approvability and suitability of towing vessels, providing training to sailors, engineers and consultants for certification in the field of the exploration, production or transport of fossil fuels and renewable energy and maritime activities, maritime occupational health and safety rules, maritime shipping and transport rules and regulations including technical rules and regulations that pertain to the exploration, production or transport of fossil fuels and renewable energy; technical training relating to technical risk, namely, providing educational and training classes regarding occupational safety rules, regulations and techniques, providing educational and training classes featuring techniques, policies and procedures for reducing workplace accidents and improving product quality, providing training in the field of business risk management, providing training in the evaluation of operational risks; training in the operation of software systems. providing online electronic publications, in particular concerning technical rules in the maritime sector, particularly concerning maritime rules regulations and concerning technical rules in the field of renewable energy, namely, providing on-line non-downloadable digital publications in the nature of manuals, guides, and newsletters all featuring information about maritime occupational health and safety rules, maritime shipping and transport rules and regulations including technical rules and regulations that pertain to the exploration, production or transport of fossil fuels and renewable energy; drilling technology safety training, namely, providing safety training on the proper use and operation of drilling equipment and apparatus; technical training relating to health and safety, namely, providing educational and training classes regarding occupational health and safety rules, regulations and techniques; education services relating to water, in particular education services relating to water management, water pollution and water safety, namely, providing educational courses in the field of water management, providing educational and training classes in the field of water management, pollution prevention and control and water safety regulations and techniques; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops in the fields of maritime energy production and transportation technologies, oil and gas production, storage and transport, underwater energy production technology, power generation, material science, water management, water pollution and water safety, and onshore and offshore wind energy, wave energy, tidal energy and solar energy production, storage and transport
12. U.S. Registration No. 2359452, “NOBLE OF INDIANA” (standard character) used in connection with:
Class 41: Educational services, namely, conducting classes, workshops, seminars, and sessions regarding instruction as to independent living skills and self advocacy; providing recreational activities for mentally-retarded and developmentally-disabled persons
13. U.S. Registration No. 4266203, “NOBLEART” (special form) used in connection with:
Class 24: Traced cloth for embroidery
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, sewing pins and needles; artificial flowers
14. U.S. Registration No. 4508513, “NOBLEPROG” (standard character) used in connection with:
Class 41: Educational services, namely, practical training, arranging and conducting of training and courses in the fields of computer programming, use of computer software products, financial markets, statistical methods, business and project management; vocational guidance; educational services namely arranging and conducting of educational conferences
15. U.S. Registration No. 4292683*, “PUBIT! BY BARNES & NOBLE” (standard character) used in connection with:
Class 41: book publishing services; online electronic publishing of e-books, magazines, newspapers, and other electronic publications in digital format
16. U.S. Registration No. 3960897, “THE SAMUEL ROBERTS NOBLE FOUNDATION” (standard character) used in connection with:
Class 41: Nonprofit agricultural related educational services, namely, workshops and seminars in the field of agriculture to directly assist, educate and benefit agricultural producers
*These registrations are owned by the same entity.
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.
A. Similarity of 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). Here, the proposed mark is similar to the marks in the cited registrations because they share the word “NOBLE”. Additionally, any design element or descriptive wording does not distinguish the marks in the cited registrations from the proposed mark.
The marks in Registration Nos. 3943146, 4266203, 3848163, and 4292683 are composite marks featuring wording and a design element. 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)). Because consumers will remember and enunciate the wording in the cited marks when requesting the registrants’ goods or services, the wording is the dominant feature creating and conveying the commercial impression of these marks.
Similarly, 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). The registrant of Registration Nos. 4672100, 4694320, 2359452, 3960897 have disclaimed “RECOMMENDS”, “CENTER”, “INDIANA”, and “FOUNDATION”, respectively, because the wording is merely descriptive of or generic for the registrant’s goods or services. Thus, “BARNES & NOBLE”, “NOBLE”, “SAMUEL ROBERTS NOBLE” drive the commercial impression of these cited marks.
For these reasons, the marks are similar.
B. Relatedness of the Goods & Services
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
The goods and services at issue in the application are:
Class 26: Lace; embroidery; ribbons; braid; buttons; hooks and eyes; pins; needles; artificial flowers
Class 41: education, teaching and training; entertainment services; arranging and conducting of workshops and seminars; arranging and conducting of congresses; organization of exhibitions for cultural and educational purposes; publication of electronic books and journals online
Class 41
The applicant’s educational and entertainment services are broad enough to encompass all of the registrants’ educational and entertainment services because the type of educational or entertainment services is not provided and/or the subject matter of the educational or entertainment services is not given. Because the applicant’s services are broad enough to include all of the registrants’ services, they are virtually identical, and thus, closely related.
Class 26
Class 24: Traced cloth for embroidery
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, sewing pins and needles; artificial flowers
With the exception of pins in the application, the registrant’s Class 26 goods are identical to the applicant’s Class 26 goods. Additionally, the applicant’s pins are broad enough to include the registrant’s sewing pins. Because the registrant’s and applicant’s goods are identical or virtually identical, they are closely related. Finally, the registrant’s traced cloth for embroidery is explicitly used with the applicant’s Class 26 goods. Because the registrant’s traced cloth for embroidery is used with the applicant’s goods, they are related.
Class 26: False hair, hair bands; hair ornaments; bows for the hair
Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). Here, the applicant’s ribbons and braids are commonly used together with or as the registrant’s goods. Joann’s, Offray, Martha Stewart, and Red Heart offer ribbon and braids for use as hair bands, bows and ornaments. This evidence establishes that the goods are similar or complementary in terms of purpose or function. Therefore, the 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).
Class 23: Yarn for hand knitting, sold in specialty yarn shops
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
For these reasons, the goods and services are related.
C. Channels of Trade
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.
D. Doubt Resolved in Favor of the Registrant
For the foregoing reasons, the applicant’s proposed mark is refused registration on the Principal Register under Section 2(d) of the Trademark Act.
III. REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS & SERVICES
Class 26
The wording “pins” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (suggestions are bold):
Class 26: Lace; embroidery; ribbons; braid; buttons; hooks and eyes; sewing pins; needles; artificial flowers
Class 41
The wording “entertainment services” in the identification of services is indefinite and must be clarified because the entertainment activity is not given. Additionally, depending on the type of entertainment activity, the subject matter is not given.
The wording “arranging and conducting of workshops and seminars” in the identification of services is indefinite and must be clarified because the subject matter is not given.
The wording “arranging and conducting of congresses” in the identification of services is indefinite and must be clarified because the type of congress is not given.
Applicant may substitute the following wording, if accurate (suggestions are bold):
Class 41: Production of radio and television shows and programmes; film production services; education, teaching and training, namely, providing classes in the field of embroidery; entertainment services, namely providing online non-downloadable videos in the field of embroidery; presentation of movies; film distribution; provision of non-downloadable films and television programs via a video-on-demand service; arranging and conducting of workshops and seminars in the field of embroidery; arranging and conducting of educational congresses; organization of exhibitions for cultural and educational purposes; publication of electronic books and journals online
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
IV. FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Ryan Cianci/
Ryan Cianci
Trademark Examining Attorney
Law Office 116
571-270-3721
ryan.cianci@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.
