Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 6/12/2018

 

INTRODUCTION

 

This Suspension Notice is in response to applicant’s communication filed on May 21, 2018.

 

In a previous Office action dated November 21, 2017, the trademark examining attorney required applicant to disclaim descriptive wording in the mark. A prior-filed pending application was also noted in the Office action. Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

In its response, applicant argues that there is no potential likelihood of confusion with the prior-filed pending application. Applicant points to registrations that contain the word “IQ;” however, the applicant has not attached these registrations. The mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record.  In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); TBMP §1208.02; TMEP §710.03. To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Therefore, these registrations are objected to and will not be considered.

 

Applicant also contends that “[t]he differences in appearance alone are sufficient to prevent a likelihood of confusion between the parties’ respective marks.” Response at 3. Applicant further contends that the butterfly design element in the prior-filed mark is the dominant feature. See Response at 4. The dominant portion of each of the marks is the word “BUTTERFLY.” This is the only wording in the prior-filed application and the first word in applicant’s applied-for mark. While the prior-filed application contains a design, this design does not overcome the likelihood of confusion because applicant’s mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Further, the addition of the word “IQ” in applicant’s mark does not overcome the likelihood of confusion because even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, given the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant's goods provided under the BUTTERFLY IQ mark constitute a new or additional goods line from the same source as the goods sold under the BUTTERFLY mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the prior-filed mark.  See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”). Therefore, this argument is not persuasive.

 

Applicant also contends that the goods of applicant and the prior-filed application are different. See Response at 4. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. Therefore, this argument is not persuasive.

 

Applicant also argues that the parties are sophisticated. Even if the parties are sophisticated, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).

 

The trademark examining attorney is suspending action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

PRIOR-FILED APPLICATION: The effective filing date of the pending application identified below precedes the filing date of applicant’s application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application either registers or abandons.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application was sent previously.

 

            - Application Serial No. 87245696

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal(s)/requirement(s) is/are continued and maintained: Disclaimer Requirement. In its response, applicant contends that the disclaimer of “IQ” is not required because the phrase is unitary and consists of a double entendre and “incongruous combination of wording.” Response at 5.

 

A “double entendre” is an expression that has a double connotation or significance as applied to the goods and/or services.  TMEP §1213.05(c); see In re Colonial Stores Inc., 394 F.2d 549, 552-53, 157 USPQ 382, 384-85 (C.C.P.A. 1968) (finding SUGAR & SPICE a double entendre and not descriptive for bakery products because it evokes the nursery rhyme “sugar and spice and everything nice”).

 

A mark that comprises a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods.  TMEP §1213.05(c).  However, the multiple meanings that make an expression a “double entendre” must be well-recognized by the public and readily apparent from the mark itself.  See In re Calphalon Corp., 122 USPQ2d 1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)) (finding SHARPIN not a double entendre in relation to cutlery knife blocks with built-in sharpeners and affirming descriptiveness refusal); In re Brown-Forman Corp., 81 USPQ2d 1284, 1287 (TTAB 2006) (finding GALA ROUGE not a double entendre in relation to wines and affirming disclaimer of ROUGE); In re The Place, Inc., 76 USPQ2d 1467, 1470-71 (TTAB 2005) (finding THE GREATEST BAR not a double entendre in relation to restaurant and bar services and affirming descriptiveness refusal). Here, applicant has provided no information as to the “well-recognized” double meaning of “BUTTERFLY IQ.” As such, applicant’s arguments that the mark is unitary because it is a double entendre are not persuasive.

 

While the abbreviation “IQ” may have multiple meanings, descriptiveness is considered in relation to the relevant goods.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).

 

Applicant also contends that a disclaimer is not proper because the mark consists of wording that is incongruous. See Response at 6. Applicant argues that the incongruity is created by the representation of a butterfly’s intelligence quotient. Id. However, as stated above, descriptiveness is considered in relation to the relevant goods.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “IQ” refers to and is used by others to refer to “image quality.” While it may also refer to “intelligence quotient,” in relation to applicant’s goods, the meaning is one of “image quality.” Therefore, applicant’s arguments are not persuasive.

 

Applicant further contends that “the term IQ in Applicant’s mark does not describe the underlying goods in its identification with the requisite degree of specificity required to support a disclaimer request.” Response at 6. Applicant relies on the fact that there are other meanings of “IQ” to support this argument. As discussed above, descriptiveness is considered in relation to the relevant goods. “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). Therefore, this argument is not persuasive and disclaimer requirement is continued and maintained.

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

ADVISORY REGARDING MANDATORY ELECTRONIC FILING RULES: The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO.  See the Mandatory Electronic Filing Rules webpage for more information.

 

 

 

/Danythe Johnson/

Examining Attorney

Law Office 120

571-272-4391

danythe.johnson@uspto.gov

 

 

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 Trademark Electronic Application System (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 6/12/2018 FOR U.S. APPLICATION SERIAL NO.87596161

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.