To: | Noble Sales Co., Inc. (trademarks@hbsr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87587745 - NOBLE - 5476.0001-00 |
Sent: | 3/13/2018 5:26:24 PM |
Sent As: | ECOM118@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87587745
MARK: NOBLE
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CORRESPONDENT ADDRESS: HAMILTON, BROOK, SMITH & REYNOLDS, P.C. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Noble Sales Co., Inc.
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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: 3/13/2018
This Office action is in response to applicant’s communication filed on 2/14/18.
Application Serial No. 87378079 has abandoned and is no longer a potential bar to registration of the applicant’s mark. Application Serial No. 87052313 has matured into a registration and the following refusal is issued.
Section 2(d) Likelihood of Confusion Refusal
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Comparison of the Marks
The dominant portion of the registered mark NOBLE CRAFT CABINETRY is the word NOBLE. The applicant’s entire mark NOBLE is identical to the dominant part of the registered mark.
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).
Comparison of the Services
The registrant’s services are identified as “On-line wholesale store services featuring cabinets.” The applicant’s services are identified as “Building supply retail store services featuring a variety of appliances, building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home furnishings, home improvement items, tools, outdoor power equipment, home safety and security items, and landscaping materials; construction consultation services for building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home improvement, home safety.”
The applicant sells building materials and home furnishings. The attached evidence shows that the applicant’s type of retail store sells the same type of goods as those sold through the registrant’s online store services.
The applicant’s and registrant’s marks are similar. The services are related in that they sell the same and related products. Registration is therefore refused under Section 2(d) of the Trademark Act.
Section 2(d) Refusals – Previously Issued
The Section 2(d) refusals based on Registration Nos. 3893653 (THE NOBLE COLLECTION); 5258500 (THE NOBLE HOUSE HOME FURNISHINGS and design); 5156690 (NOBLE BRANDS) and 5287818 (NOBLE) are maintained.
The applicant’s mark is identical to the entire registered mark or to the dominant portion of the registered mark in each instance. The goods and services in the registrations are related to the applicant’s services in that the goods would be sold through the applicant’s services and the services are related retail services where the same type of items are sold or are services that would be within the scope of the applicant’s services.
Identification of Services
The requirement that the applicant clarify the identification of services is maintained.
The wording “Building supply retail store services featuring a variety of appliances, building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home furnishings, home improvement items, tools, outdoor power equipment, home safety and security items, and landscaping materials” is acceptable in Class 35.
In this case, the application originally identified the goods and/or services as follows: “business consultation services for building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home furnishings, home improvement, home safety.”
However, the proposed amendment identifies the following goods and/or services: “construction consultation services for building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home improvement, home safety.”
This portion of the proposed amendment is beyond the scope of the original identification because the original identification was for business consultation services and the amended identification is for construction consultation services. These are two completely different types of consulting services.
The requirement that the applicant clarify “business consultation services for building materials, lighting and electrical supplies, plumbing supplies, roofing materials, home furnishings, home improvement, home safety” by indicating the type of business consultation being provided in regard to the identified subject matter is maintained. The subject matter does not list business services. The nature of what business type of service is being provided is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: business consultation services for those in the building material, lighting and electrical supply, plumbing supply, roofing materials, home furnishings, home improvement and home safety industries.
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.
/Kelley L. Wells/
Trademark Attorney
Law Office 118
571-272-9312
kelley.wells@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.