To: | GNOME INTERNATIONAL LIMITED (trademarks@moas.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87437610 - GNOME - N/A |
Sent: | 8/4/2017 10:27:26 AM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87437610
MARK: GNOME
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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: GNOME INTERNATIONAL 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: 8/4/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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 UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO CLASS 003 AND 026
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5175834 and 4378768. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is GNOME in standard character. The mark in Reg. No. 5175834 is SOAPY GNOME in standard character. The mark in Reg. No. 4378768 is GNOMEACRES also in standard character.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. 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.
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).
In the present case, applicant’s applied-for mark, GNOME is confusingly similar to the cited marks as applicant’s mark is identical in sound and appearance to the wording in the registrant’s marks. Moreover, this shared phrase conveys the same meaning in both marks, that is, “[o]ne of a fabled race or dwarflike creatures who live underground and guard treasure hoards”. See attached evidence from The American Heritage Dictionary.
The additional word SOAPY in registrant’s mark in Reg. No. 5175834 does not sufficiently distinguish the marks from one another as 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 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). Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the distinct wording GNOME the more dominant element of the mark.
Similarly, the wording ACRES in GNOMEACRES in Reg. No. 4378768 does not obviate the similarities as 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 marks.
Consequently, the marks are identical in dominant part and confusingly similar.
Relatedness of the Goods
With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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).
U.S. Registration No. 5175834
The applicant’s identified goods are: “Perfumery; essential oils; cosmetics; make-up; eye make-up; eyeliners; blushers; lipsticks; hair lotions; soaps” in Class 003. Applicant’s identified goods are, in relevant part: “Bath fizzies; Body butter; Body oils; Body scrub; Deodorant for personal use; Lip balm; Shaving soaps; Soaps; Skin care preparations, namely, body balm” in Class 003. Applicant’s and registrant’s beauty products are highly related. The attached business Internet evidence from http://tonsavon.com/ , http://usa.loccitane.com/, http://www.burtsbees.com/, and http://www.fresh.com/US/ establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark. 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).
U.S. Registration No. 4378768
The applicant’s identified goods are: “Lace; embroidery; ribbons; braid; buttons; hooks and eyes; pins; needles; artificial flowers” in Class 026. Registrant’s identified goods are “yarns” in Class 023. Applicant’s and registrant’s craft related goods are highly related. The attached business Internet evidence from: http://www.redheart.com/, http://www.makersmercantile.com/, http://www.darngoodyarn.com/, and http://www.herrschners.com/ establishes that the relevant goods are provided through the same trade channels and utilized by the same classes of consumers in the same fields of use and the goods are similar or complementary in terms of purpose. Moreover, registrant sells some of applicant’s goods as shown by registrant’s website, http://shop.gnomeacres.com/. 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).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods 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).
As such, upon encountering GNOME and SOAPY GNOME and GNOMEACRES, both used on the respective identified goods, consumers are likely to be confused and mistakenly believe that they emanate from a common source. As such, registration must be refused under Trademark Act Section 2(d).
Applicant should note the additional grounds for the refusal of registration below.
ADVISORY: PRIOR-FILED APPLICATION
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.
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION
As an initial matter, The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
In the present case, the wording in the identification of goods/services is either too broad or indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must specify the common commercial or generic name for the goods/services. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer. If applicant add an additional class, applicant must fulfill the multi-class requirements indicated below.
International Class 003
The wording “soaps” is too broad and must be clarified because it is too broad and could include goods in other international classes. In particular, this wording could encompass medicated soaps in Class 005 or non-medicated soaps in Class 003.
International Class 026
The wording “pins” is too broad and must be clarified because it is too broad and could include goods in other international classes. In particular, this wording could encompass push pins in Class 016, rolling pins in Class 021 or sewing pins in Class 026.
International Class 038:
The wording “telecommunication services” is too broad and must be clarified as to the nature of the telecommunication services. For instance, “telecommunication access services”.
The wording “communication services for the electronic transmission of voices” is too broad and must be further clarified as to the nature of the services or the medium of transmission. For instance, “communication services, namely, the electronic transmission of voices via {specify e.g., wireless communication networks and the internet”}.
The wording “transmission of data, audio, video and multimedia files” is too broad and must be clarified as to the nature of the services or the medium of transmission. For instance, “wireless electronic transmission of data, audio, video and multimedia files”, or “transmission of data, audio, video and multimedia files in the nature of telecommunication services by means of telecommunications networks, wireless communication networks, and the Internet”.
International Class 041:
The wording “education, teaching and training” is too broad and could include multiple International Classes. Applicant must clarify the nature of the services as well as the field. For instance, “educational services, namely, conducting {indicate modes of instruction, e.g., classes, seminars, conferences, workshops} in the fields of {indicate specific fields, e.g. pet care, math, tax preparation}; teaching and training services in the field of {indicate field or subject matter}”.
The wording “entertainment services” is too broad and must be clarified as to the nature of the services.
The wording “arranging and conducting of workshops and seminars” is too broad and must be clarified as to the topic or subject matter. Further, “arranging of workshops” should be further clarified that they are “professional workshops”.
The wording “arranging and conducting of congresses” is too broad and could include other International Classes. For instance, “arranging and conducting business congresses” is in Class 035 whereas, “arranging and conduction educational congresses” is in Class 041. If applicant is arranging and conducting an educational congress in a particular field, applicant should indicate the field.
Taking into account the foregoing, applicant may adopt the following, if accurate:
Class 026: Lace; embroidery; ribbons; braids; buttons; hooks and eyes; sewing pins; needles; artificial flowers
Class 038: Telecommunication access services; communication services, namely, the electronic transmission of voices via {specify e.g., wireless communication networks and the internet”}; wireless electronic transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; electronic transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services
Class 041: Production of radio and television shows and programmes; film production services; educational services, namely, conducting {indicate modes of instruction, e.g., classes, seminars, conferences, workshops} in the fields of {indicate specific fields, e.g. pet care, math, tax preparation}; teaching and training services in the field of {indicate field or subject matter}; entertainment services in the nature of {indicate specific event or act, and field, e.g. live musical group, television comedy series, ethnic festival in Class 041}; presentation of movies; film distribution; provision of non-downloadable films and television programs via a video-on-demand service; arranging and conducting of professional workshops and seminars in the field of {indicate topic or subject matter}; arranging and conducting of educational congresses in the field of {indicate field}; organization of exhibitions for cultural and educational purposes; publication of electronic books and journals online
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.
MULTI-CLASS APPLICATION REQUIREMENTS
(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 fees 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 fees sufficient for only 4 classes. 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 44 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.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
FOREIGN REGISTRATION REQUIREMENT
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).
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.
/Heather A. Sales/
Examining Attorney
Law Office 122
(571) 272-7835
Heather.Sales@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.