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. 87712336
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: Clark Associates, 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: 3/12/2018
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.
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.
REFUSAL – SECTION 2(d) LIKELIHOOD OF CONFUSION- CLASSES 5, 7, 11 & 21 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5287818, 5251181, 4801255 and 4415090. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Introduction to Section 2(d) Analysis
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.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the 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). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
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.
Comparison 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 comparing the marks, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).
In this particular case, applicant’s mark is “NOBLE” claimed in standard characters.
Registrants’ marks are as follows:
“NOBLE” claimed in standard characters (U.S. Registration No. 5287818);
“NOBLE” claimed in special form (U.S. Registration No. 5251181);
“NOBLE OUTFITTERS” claimed in standard characters with “OUTFITTERS” disclaimed (U.S. Registration No. 4801255);
“NOBLE” claimed in standard characters (U.S. Registration No. 4415090).
In the present case, applicant’s mark is NOBLE claimed in standard characters and two of the cited marks are also NOBLE claimed in standard characters. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
Applicant’s mark is also similar in commercial impression to the registrant’s “NOBLE OUTFITTER’S” mark and the remaining registrant’s mark “NOBLE” claimed in special form. The first step in comparing the marks requires an evaluation of the commercial impression of the marks. 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. While marks should not be dissected, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))).
Various factors are considered in determining the dominant element of a compound mark. For example, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Additionally, for a composite mark containing both words and a design, the word portion is 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 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, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In applying these precepts to both the applicant’s and registrants’ marks, it is clear that applicant’s mark is similar in commercial impression to the registrants’ mark. Here, the first terms of the marks is identical - NOBLE. While the registrant’s marks vary slightly from the applicant’s mark- one contains an additional descriptive term and the other is claimed in special form- the variations do not render applicant’s mark dissimilar from them. Rather, as the marks share the identical first term “NOBLE,” the marks create the same overall commercial impression of having or showing fine qualities.
Applicant’s mark is also considered similar in sound to the registrants’ mark. Here, as the marks contain the identical term “NOBLE” the marks are inherently similar in sound when pronounced. Please note that the TTAB has held that similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar, and that slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); 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); In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); TMEP §1207.01(b)(iv).
Moreover, applicant’s mark is also considered confusingly similar in appearance to the registrants’ marks. Marks can be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrants’ mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii). In this case, the identical term “NOBLE” appears in the parties’ marks. Therefore, as identical terms appear in both applicant’s and registrants’ marks, applicant’s mark is also considered confusingly similar in appearance to the registrants’ marks.
Finally, it must be noted that applicant’s mark is presented in standard characters while one registrant’s mark is presented in special form. 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”). Therefore, as applicant’s mark may be presented in the same manner of display as registrant’s mark, the marks are considered similar in appearance for this additional reason.
Comparison of the Goods
Applicant’s and registrants’ goods are compared to determine whether they are similar or commercially related or travel in the same trade channels. It is important to note that the goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
Please note that the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
In this case, applicant’s identified goods are, in relevant part, as follows: “Personal lubricants, Odor Neutralizing Preparations, Air Deodorizers, Anti-Insect Spray, Disinfectant Bathroom Cleaners, Disinfectants, First-Aid Boxes filled, Hand-Sanitizing Preparations, Insect Repellents, Odor Neutralizing Preparations, Sanitizing Preparations for Commercial Use; Dish Washing Machines, Dishwashers; Dispensing Units for Air Fresheners; Dish Covers, Dish Racks, Disposable Gloves, Empty Bottles, Plastic Buckets, Plastic Spray Nozzles, Pump Dispenser, Soap Dispensers, Storage Racks for Gloves, Toilet Brushes.”
Registrants’ identified goods are, in relevant part, as follows:
“Heating installations, namely, heating boilers for hot water and hot water supply; combination heating boilers and water heaters” (U.S. Registration No. 5287818);
“Air filtering installations; Air filters for industrial installations; Air purifying apparatus; Cultivation lamps and parts thereof, namely, high pressure sodium (HPS), metal halide, plasma, and light emitting diode (LED); Dampers, namely, control devices used in air ducts to regulate the flow of air; Dehumidifiers; Electric fans; Electric lighting fixtures; Filters and filtering devices for air and gas conditioning; Lamp reflectors; Ventilating exhaust fans; Ventilating, high-velocity fixed exhaust fans for commercial and agricultural use; Ventilating, high-velocity portable exhaust fans for commercial and agricultural use; Water filtering units for aquariums; Water filters” (U.S. Registration No. 5251181);
“Pharmaceutical preparations for wounds; wound dressings; pet care products, namely, insect repellant; non-medicated, non-prescription, non-toxic topical ointment, sprays, and sticks for repelling flying insects” (U.S. registration no. 4801255); and
“Flasks in the form of light weight travel containers” (U.S. Registration No. 4415090).
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on 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 application use(s) broad wording to describe some of its goods –“empty bottles” - which presumably encompasses all goods of the type described, including registrants’ more narrowly identified goods, “Flasks in the form of light weight travel containers.” See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Additionally, as the attached third party evidence demonstrates, these goods are not only related, but are found in similar trade channels and commonly emanate from a single source. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein- namely, applicant’s and registrants’ goods as identified, above – are of a kind that may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).
As the attached third-party registrations demonstrate, applicant’s and registrants’ 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). Thus, as applicant’s and registrants’ goods are commercially related and travel in the same trade channels, the goods would be encountered by the same consumers under circumstances such that offering the goods under similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.
Therefore, in light of the foregoing, applicant’s mark is similar in sound, appearance and commercial impression to the registrants’ marks, and applicant’s goods are related to the registrants’ goods. As such, a likelihood of confusion exists between the applicant’s and registrants’ marks. Consequently, registration is denied for the applied for mark.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
POTENTIAL SECTION 2(d) REFUSAL: PRIOR PENDING APPLICATIONS - CLASSES 3 & 11
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.
REQUIREMENT: DEFINITE & PROPERLY CLASSIFIED IDENTIFICATION OF GOODS – CLASSES 3, 5, 16, 18 & 21
International Class 3
The wording “Compressed Air in Cans” in the identification of goods is indefinite and must be clarified to indicate the use or function of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Compressed air in cans for cleaning and dusting.
The wording “Degreasers” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass descaling preparations for industrial purposes are in Class 1 and descaling preparations for household purposes in Class 3. Applicant may substitute the following wording in International Class 3, if accurate: Descaling preparations, other than for household purposes.
International Class 5
International Class 18
Applicant did not designate in the application the required international class number(s) for applicant’s goods. Thus, the USPTO conducted a preliminary review of the specified goods and assigned an international class number(s). See TMEP §1401.03(b). However, in this case, the USPTO incorrectly classified the “dollies” goods in International Class 18; the correct international class number is International Class 12. Therefore, applicant may respond by requesting that the USPTO amend the application to classify the goods in International Class 12. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
International Class 21
In light of the foregoing, applicant may adopt the following identification of goods in its entirety, if accurate:
International Class 1: Chemical test paper; Stain repellents
International Class 3: All-Purpose cleaners, carpet cleaners, carpet cleaners with deodorizer; Cleaner for use on floors, cleaner for use on grout, cleaners for use on fryers, cleaners for use on ice machines; Compressed air in cans for cleaning and dusting; De-greasing preparations for household purposes; Descaling preparations, other than for household purposes; Dish detergents; Drain openers; Drying agents for dishwashing machines; Floor finishing preparation, furniture polish, glass cleaners; Gum remover; Non-medicated hand soaps; Laundry additives for water softening, laundry bleach, laundry detergent, metal polishes, oven cleaners, rinse agents for dishwashing machines, stain removers
International Class 5: Personal lubricants; Odor neutralizing preparations for general use on various surfaces; Air deodorizers, anti-insect spray, disinfectant bathroom cleaners, disinfectants; First-aid boxes filled, hand-sanitizing preparations, insect repellents; Sanitizing preparations for commercial use
International Class 7: Dish washing machines; Dishwashers
International Class 11: Dispensing units for air fresheners
International Class 12: Dollies
International Class 16: Adhesive labels, adhesive tape dispensers, storage rack for binders
International Class 21: Dish covers; Dish drying racks; Disposable latex and nitrile gloves for general use; Bottles, sold empty; Plastic buckets, plastic spray nozzles; Manually actuated pump dispensers for attachment to containers for use in dispensing liquids; Soap dispensers; Storage racks for disposable latex and nitrile gloves for general use; Toilet brushes
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.
ADVISORY: MULTICLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that could be classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 8 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 1, 3, 7, 11, 16, 12 and 21 only. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
REFUSAL: UNACCEPTABLE SPECIMEN OF USE – CLASS 5 ONLY
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE/CORRESPONDENCE INFORMATION & GUIDELINES
“USPTO employees cannot give advice on trademark law. It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals, or to recommend a qualified practitioner. 37 C.F.R. §2.11.” TMEP §709.06.
Examining attorneys cannot provide any statements about applicants’ rights; “[t]he examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re Am. Physical Fitness Research Inst. Inc., 181 USPQ 127, 127–28 (TTAB 1974); see also TMEP §1801.” TMEP §705.02
Informal communications with the examining attorney “may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal.” TMEP §709.05.
For consideration of arguments regarding any substantive refusal to be considered, they must be filed in a formal response. TMEP §709.05.
The trademark examining attorney may only provide additional clarification pertaining to the refusal(s) and/or requirement(s) in this Office action. To this end, applicant may telephone or e-mail the assigned trademark examining attorney. For information pertaining to the trademark registration process, and for further explanation of refusals and requirements applicant may consult resources provided by the USPTO at http://www.gov.uspto.report/trademark. The USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more. Tools on the USPTO’s website that are particularly helpful during the examination process are (1) informational videos and (2) application processing timelines. The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, including specimens and goods and services, and are located at http://www.gov.uspto.report/trademarks/process/TMIN.jsp. The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as legal deadlines, and are located at http://www.gov.uspto.report/trademark/trademark-timelines/trademark-application-and-post-registration-process-timelines. Additionally, the USPTO website provides a “Basic Facts” booklet and video series that include basic information about registering a trademark, including how trademarks, patents, copyrights, domain names, and business name registrations all differ, and how to select the right mark – one that is both federally registrable and legally protectable. The “Basic Facts” booklet and video series also explain the benefits of federal registration and suggest resources to help an applicant with his or her application. The booklet is located at http://www.gov.uspto.report/sites/default/files/BasicFacts_0.pdf in pdf format, and the videos are located at http://www.gov.uspto.report/trademarks-getting-started/trademark-basics. If, after consulting these resources, applicant’s questions regarding general trademark application matters remain unanswered, applicant may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 for additional assistance. TMEP §709.06.
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. Additional instructions for responding to this Office action are located below the signature block.
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; all relevant e-mail communications will be placed in the official application record. See 37 C.F.R. §§2.62 (c), 2.191; TMEP §§304.01-.02, 709.04-.05.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
/N. Gretchen Ulrich/
Trademark Examining Attorney
Law Office 113
U.S. Patent & Trademark Office
phone: (571) 272-1951
gretchen.ulrich@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.
