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: 7/17/2017

 

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.

 

Summary of Issues:

 

• Refusal – likelihood of confusion
• Advisory – prior pending applications
• Identification and classification of goods and services
• Multiple class application requirements

 

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. 1480350, 4035428, 4035427, 3716210, 3709076, 2303896, 2344538, 4837168, 4813070, 4739303, 4675592, 4246137, 4246136, 4263591, 4305905, 4365150, 3759451, 3897643, 3747597, 3869573 and 4003269.  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.

 

Comparison of Marks

 

Applicant seeks to register the mark CISCO and design for “furniture; mirrors; lighting; fabrics; textiles; leathers; and retail store services”. The registered marks as are follows:

 

U.S. Registration No. 1480352 – SYSCO for various goods such as flatware, food thermometers and candles

U.S. Registration No. 4035428 – CISCO and design for various goods such as video cameras and “On-line retail store services featuring consumer electronic devices and related accessories”

U.S. Registration No. 4035427 – CISCO for various goods such as video cameras and “On-line retail store services featuring consumer electronic devices and related accessories”

U.S. Registration No. 3716210 - CISCO STORE for “Retail store services and temporary retail store services featuring computer hardware and software, electronics, telecommunications hardware and devices, publications, office supplies, housewares, clothing, and sporting equipment”

U.S. Registration No. 3709076 – CISCO for various goods such as computer hardware and books

U.S. Registration No. 2303896 – SYSCOWARE for various goods such as tableware and plates

U.S. Registration No. 2344538 – SYSCO for various goods such as skin cream, towels utensils and wine

U.S. Registration No. 4837168 - SYSCO TRENDZ for good such as sandwich bags

U.S. Registration No. 4813070 - GOOD THINGS COME FROM SYSCO for “Towels; bedsheets; bed blankets; comforters; duvets; duvet covers; mattress pads; pillow cases; pillow shams; bed skirts; pillow covers, namely, pillow protectors”

U.S. Registration No. 4734903 - GOOD THINGS COME FROM SYSCO for “Drinking straws; mattresses”

U.S. Registration No. 4675592 - CISCO VIDEOSCAPE for computer hardware and software

U.S. Registration No. 4246137 - GOOD THINGS COME FROM SYSCO for “Distributorship services in the field of toiletries, personal care products and related accessories, linens, foodservice products, janitorial products, and paper products to the hotel, lodging and cruiseship industries”

U.S. Registration No. 4246136 - GOOD THINGS COME FROM SYSCO for “Distributorship services in the field of toiletries, personal care products and related accessories, linens, foodservice products, janitorial products, and paper products to the hotel, lodging and cruiseship industries”

U.S. Registration No. 4263591 – CISCO and design for various goods such as clothing, books and computer hardware

U.S. Registration No. 4305905 - CISCO APPHQ for “Online retail store services featuring computer software provided via the Internet and other communication networks; retail store services featuring computer software for use on mobile devices, wireless telecommunications devices, and other consumer electronics”

U.S. Registration No. 4365150 - CISCO ONPLUS for computer hardware and software

U.S. Registration No. 3759451 – CISCO and design for various goods such as computer hardware and books

U.S. Registration No. 3897643 - CISCO WEBEX for computer software

U.S. Registration No. 3747597 – CISCO and design for various goods such as key chains, computer mice and backpacks

U.S. Registration No. 3869573 – SYSCO for “Distributorship services in the field of toiletries, personal care products, shower caps, pre-packaged sewing containers, shoe polishing kits, linens, foodservice products, janitorial products, and paper products for use in the hotel, lodging and cruise ship industries”

U.S. Registration No. 4003269 - CISCO QUAD for computer software

 

As to some of the marks, the marks convey similar commercial impressions in that they share the word CISCO.  The addition of the design elements to the applied-for mark and some of the registered mark does not avoid confusion because, 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)).  Moreover, the additional wording some of the registered marks does not avoid confusion.

 

With respect to the registered marks featuring the word SYSCO, the marks convey similar commercial impressions in that such wording is likely to be pronounced in a highly similar, if not identical manner, as the applied-for mark.  The marks thus feature phonetically equivalent elements 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).

 

Comparison of Goods and Services

 

The goods of the parties similar, related, or encompassing that applicant’s broadly-worded recitation encompasses some of the goods featured in the cited registrations.  Moreover, applicant’s recitation features the broad wording “retail store services.”  Applicant has not specified what is featured in the retail stores.  Thus, it encompasses the types of goods featured in the registrations featuring retail store services. 

 

Likewise, as applicant has not specified what is featured in the retail stores, applicant’s recitation features retail stores featuring goods identified in the registrations.  The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks for coats and for retail outlets featuring camping and mountain climbing equipment, including coats, likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”); TMEP §1207.01(a)(ii).

 

Consumers who encounter similar marks for potentially identical, similar or related goods and services are likely to be confused as to their source.  For the foregoing reasons, registration is refused pursuant to Section 2(d) of the Trademark Act.  Although registration has been refused, applicant may present arguments in support of registration.

 

PRIOR PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87380163, 87310949, 87185289, 87177501, 87166751, 87118864, 87087220, 87062139, 86279805, 86832445, 86754770, 86567264 and 86324859 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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 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.

 

Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 87380163, 87310949, 87185289, 87177501, 87166751, 87118864, 87087220, 87062139, 86279805, 86832445, 86754770, 86567264 and 86324859.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods reads as follows: furniture; mirrors; lighting; fabrics; textiles; leathers; and retail store services.

 

The identification of goods and services is indefinite and must be clarified because it is overly broad or indefinite and does not specifically indicate the nature of some of the goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically:

 

• Lighting – must specify the types of lighting
• Fabrics - must specify the types of fabrics
• Textiles - must specify the types of textiles
• Leathers – must clarify if the goods are “leather” or whether they are leather goods.  If the goods are leather goods, applicant must indicate the types of leather goods
• Retail store services – must indicate the goods featured in the retail stores

 

Applicant may adopt the following identification, if accurate: 

 

• Lighting, namely, [specify, e.g., lamps], in Class 11

• Leather; leather goods, namely, [specify, e.g., handbags, luggage], in Class 18

• Furniture; mirrors, in Class 20
• Fabrics, namely, [specify, e.g., silk fabrics]; textiles, namely, [specify, e.g.,  table cloth of textile], in Class 24
• Retail store services featuring [specify, e.g., furniture, mirrors lighting, fabrics, textiles, leather goods], in Class 35

 

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.

 

MULTIPLE CLASS APPLICATIONS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

 

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

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.  

 

 

 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@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 7/17/2017 FOR U.S. APPLICATION SERIAL NO. 87412461

 

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 7/17/2017 (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.