Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 04, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 9, 2019.

 

In a previous Office action(s) dated June 19, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, and prior-filed applications.  In addition, applicant was required to satisfy the following requirement: amend the identification of goods and services.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided in International Class 009, 014, 018, and 021.  See TMEP §§713.02, 714.04. 

 

The following refusal(s) have also been obviated: Citations against marks in International Classes 012, 016, 018, 020, 021, 025, 035, 036, 037, 040, 041, and 042 have been obviated.  See TMEP §§713.02, 714.04. 

 

In addition, the following refusal(s) and/or requirement(s) have been withdrawn Section 2(d) citations against marks owned by Textron Innovations, Inc. as a consent agreement was provided;.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion – Classes 009, 014, 024 and 028 ONLY
• Amendment to the Identification of Goods Required – International Class 016 and 035 ONLY
• Multiple-Class Application Requirements
• Partial Abandonment Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASSES 009, 014, 024 AND 028 ONLY

 

Registration was refused under Trademark Act Section 2(d) because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 1285022, 1322986, 4177862, and 4920488 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 1285022, 1322986, 4177862, and 4920488.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Applicant’s applied-for mark is BELL (with design) for the following goods:

 

Class 009:       Sunglasses; wireless ear buds; electrical power cords; electric audio speakers; plug adaptors; magnetic clips being magnets; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto

           

Class 014:       Ornamental lapel pins; clocks; leather key chains; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto

 

            Class 024:       Lap blankets; baby blankets; golf towels; beach towels

 

Class 028:       Chess sets; divot repair tools for golfers; golf accessory pouches; golf tees; golf balls; golf ball markers; golf bag covers; scale model aircraft; teddy bears; flying discs; toy banks; toy aircrafts; toy spinners; mini basketball hoops and balls

 

The cited registered marks are as follows:

 

U.S. Reg. No. 1285022 – BELL (in standard characters) for “Electrical Wiring Devices-Namely, Electrical Outlet and/or Junction Boxes, Adaptors, Extensions, Covers and Cover Plates Therefor, Electrical Switches, Electrical Plugs and Receptacles, 3-Wire Grounding Units and Wall Plates for Electrical Switches and Outlets” in International Class 009.

 

U.S. Reg. No. 1322986 – BELL (with oval carrier) for “Protective Helmets and Face-Shields Therefor; Goggles, Protective Visors and Sunglasses” in International Class 009.

 

U.S. Reg. No. 4920488 – BELL (with oval carrier) for “Altimeters; Carrying cases for cell phones; Compasses; 12V and USB electrical outlets for automobiles; 12V and USB electrical sockets for automobiles; Emergency auto kits comprised of a hand held spotlight and battery charger; Eyewear cases; Eyewear retainers; Holders for compact discs; Light emitting diode (LED) displays; Light emitting diodes (LEDs); Pressure gauges; Protective carrying cases specially adapted for global positioning system (GPS) apparatus; Thermometers not for medical use; Tire pressure gauges; USB hubs; Vehicle safety equipment, namely, electronic deer alerts” in International Class 009 and “Clocks” in International Class 014.

 

U.S. Reg. No. 4177862 – BELL’S (in standard characters) for “Beach towels; towels” in International Class 024 and “Discs for playing disc golf; playing cards” in International Class 028.

 

Similarities 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).

 

International Class 009

 

In the initial Office action, examining attorney found applicant’s mark, BELL (with design), to be highly similar to registrants’ mark, BELL (standard characters), BELL (with oval carrier), and BELL (with oval carrier), where (1) the literal elements of the marks are the identical word, BELL, (2) the additional matter in applicant’s mark is a design element which does not sufficiently alter the commercial impression of the identical word, BELL.

 

In its response, applicant argues generally that citations are not likely to cause confusion as there has been coexistence or the cited marks create a different commercial impression.

 

Examining attorney respectfully disagrees with applicant’s arguments.

 

As previously stated, applicant’s mark is BELL and registrants’ marks are BELL. The literal element of 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 the literal elements 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.  Id.

 

Thus, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.   See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Further, 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 word portion 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”). As such, the registered mark in standard characters could be stylized and displayed in a manner similar to the applicant’s mark.

 

As such, the marks are confusingly similar in nature.

 

International Class 014

 

In the initial Office action, examining attorney found applicant’s mark, BELL (with design), to be highly similar to registrant’s mark, BELL (with oval carrier), where (1) the literal elements of the marks are the identical word, BELL, (2) the additional matter in applicant’s mark is a design element which does not sufficiently alter the commercial impression of the identical word, BELL.

 

In its response, applicant argues generally that citations are not likely to cause confusion as there has been coexistence or the cited marks create a different commercial impression.

 

Examining attorney respectfully disagrees with applicant’s arguments.

 

As previously stated, applicant’s mark is BELL and registrants’ marks are BELL. The literal element of 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 the literal elements 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.  Id.

 

Thus, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.   See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). Specifically, the oval carrier or border design does not alter the commercial impression created by the identical term, BELL.

 

As such, the marks are confusingly similar in nature.

 

International Class 024

 

In the initial Office action, examining attorney found applicant’s mark, BELL (with design), to be highly similar to registrant’s mark, BELL’S (standard characters), where (1) the literal elements of the marks are the identical word, BELL, (2) the additional matter in applicant’s mark is a design element which does not sufficiently alter the commercial impression of the identical word, BELL.

 

As previously stated, the ending of the registered mark includes an apostrophe and letter “s.”  This additional matter has little, if any, trademark significance and does not otherwise affect the overall similarity of the marks in terms of commercial impression.  See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark . . . has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).

 

Thus, where the root term, BELL, is identical in both marks, the addition of the “’S” in the registered mark does not alter the commercial impression. .

 

As such, the marks are confusingly similar in nature.

 

International Class 028

 

In the initial Office action, examining attorney found applicant’s mark, BELL (with design), to be highly similar to registrant’s mark, BELL’S (standard characters), where (1) the literal elements of the marks are the identical word, BELL, (2) the additional matter in applicant’s mark is a design element which does not sufficiently alter the commercial impression of the identical word, BELL.

 

As previously stated, the ending of the registered mark includes an apostrophe and letter “s.”  This additional matter has little, if any, trademark significance and does not otherwise affect the overall similarity of the marks in terms of commercial impression.  See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark . . . has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).

 

Thus, where the root term, BELL, is identical in both marks, the addition of the “’S” in the registered mark does not alter the commercial impression. .

 

As such, the marks are confusingly similar in nature.

Relatedness of the Goods

 

The goods are compared to determine whether they are similar, 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, 1207.01(a)(vi).

 

The compared goods 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); TMEP §1207.01(a)(i).  They 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).

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

International Class 009

 

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 extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). 

 

As previously stated, “wireless ear buds; electric audio speakers; magnetic clips being magnets” are not affected by the likelihood of confusion refusal.

 

The applicant identifies “Sunglasses; electrical power cords; plug adaptors; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto”.

 

The owners of the cited registrations produces the following applicable goods “Electrical Wiring Devices-Namely, Electrical Outlet and/or Junction Boxes, Adaptors, Extensions, Covers and Cover Plates Therefor, Electrical Switches, Electrical Plugs and Receptacles, 3-Wire Grounding Units and Wall Plates for Electrical Switches and Outlets,” “Goggles, Protective Visors and Sunglasses,” and “12V and USB electrical outlets for automobiles; 12V and USB electrical sockets for automobiles; Emergency auto kits comprised of a hand held spotlight and battery charger; Eyewear cases; Eyewear retainers”.

 

In this case, the goods, “sunglasses”, in the application and registration(s) are identical.  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.

 

Further, the attached Internet evidence, consisting of website screenshots, establishes that the same entity commonly produces the relevant electric goods, and markets the goods under the same mark. See attached website screenshots from Americord, Grainger, Leviton, Bergen Industries, Voltec Industries, Kord King and Feller. Likewise, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See attached website screenshots from Lowes, Home Depot, Ace Hardware, Menards, and HD Supply Facilities Maintenance.  Thus, 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).

 

International Class 014

 

This refusal applies only to the following goods: clocks

 

The applicant identifies “Ornamental lapel pins; clocks; leather key chains; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto”.

 

While the owner of the cited registrations produces the following applicable goods “clocks”.

 

In this case, the goods, “clocks”, in the application and registration(s) are identical.  Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.

 

Applicant argued generally that the cited mark has co-existed for an extended period of time in International Class 014, and would therefor avoid a likelihood of confusion. However, the applicant has no registered marks identifying the goods “clocks” and therefore argument is unpersuasive.

 

International Class 024

 

The applicant identifies “Lap blankets; baby blankets; golf towels; beach towels”,

 

The owner of the cited registrations produces the following applicable goods “Beach towels; towels”.

 

Both the applicant and registrant identify the identical goods, “beach towels.”

 

Further, the registration uses broad wording to describe, towels, which presumably encompasses all goods of the type described, including applicant’s narrower, golf towels and beach towels.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

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)).  Thus, applicant’s and registrant’s goods are related.

 

Lastly, the attached Internet evidence, consisting of website screenshots, establishes that the same entity commonly produces the relevant goods, towels, blankets and baby blankets, and markets the goods under the same mark. See attached website screenshots from. See attached website screenshots from Pottery Barn, Ralph Lauren, Lands End, Nautica, and Crate & Barrel. Thus, 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).

 

Applicant argued generally that the cited mark has co-existed for an extended period of time in International Class 024, and would therefor avoid a likelihood of confusion. However, the applicant has no registered marks identifying the goods “Lap blankets; baby blankets; golf towels; beach towels” and therefore argument is unpersuasive.

 

International Class 028

 

The applicant identifies “Chess sets; divot repair tools for golfers; golf accessory pouches; golf tees; golf balls; golf ball markers; golf bag covers; scale model aircraft; teddy bears; flying discs; toy banks; toy aircrafts; toy spinners; mini basketball hoops and balls”.

 

The owner of the cited registrations produces the following applicable goods “Discs for playing disc golf”.

 

In this case, the application uses broad wording to describe, flying discs, which presumably encompasses all goods and/or services of the type described, including registrant’s narrower discs for playing disc golf.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

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)). 

 

Thus, applicant’s and registrant’s goods are related.

 

Conclusions

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co. , 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc. , 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

For these above discussed reasons, the refusal under Section 2(d) is now made FINAL.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS AND SERVICS REQUIRED – INTERNATIONAL CLASS 016 AND 035 ONLY

 

The following requirements are now made FINAL:  Amendment to the Identification of Goods and Services in International Classes 016 and 035.  See 37 C.F.R. §2.63(b).

 

Applicant identified the following goods:

 

Class 016:       Pens; letter openers; CD case openers; holders for notepads; document portfolios; calendars; calendar stands; decals; paperweights; desktop business card holders; desk stands and holders for pens; photo albums; photo storage boxes; posters; notebooks; padfolios; blank journal books; name badge holders; magnetic note boards; bookends           

 

Class 035:       Customer services, namely, responding to customers inquiries for others through the use of telecommunication devices and computer networks in the field of avionics; providing customer support services in the field of aviation

 

Applicant has classified “CD case openers” in International Class 016; however, the proper classification is International Class 008. Therefore, applicant may respond by (1) adding International Class 008 to the application and reclassifying these goods in the proper international class, (2) deleting “CD case openers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “providing customer support services in the field of aviation” in the identification of services is indefinite and must be clarified because the nature of the support services being provided remains unclear. For example, if the applicant is “providing technical support in the field of aviation, namely, operation of a telephone call center for others” that would be in International Class 035. Whereas, “Technical support services, namely, troubleshooting in the nature of providing customer support services in the nature of the repair of aircraft and aviation maintenance” would be in International Class 037. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate:

 

Bolded wording has been added to the identification of goods to indicate suggested amendments.

 

Class 008:       Hand-operated cutting tools, namely, CD case openers

 

Class 016:       Pens; letter openers; holders for notepads; document portfolios; calendars; calendar stands; decals; paperweights; desktop business card holders; desk stands and holders for pens; photo albums; photo storage boxes; posters; notebooks; padfolios; blank journal books; name badge holders; magnetic note boards; bookends         

 

Class 035:       Customer services, namely, responding to customers inquiries for others through the use of telecommunication devices and computer networks in the field of avionics; providing customer support services in the field of aviation, namely, operation of a telephone call center for others

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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 APPLICATION REQUIREMENTS

 

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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 18 classes; however, applicant submitted a fees sufficient for only 17 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).

 

See 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.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Classes 009, 014, 016, 024, 028, 035 will be deleted from the application: 

 

Class 009:       Sunglasses; electrical power cords; plug adaptors; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto

 

            Class 014:       Clocks

 

            Class 016:       CD case openers

           

Class 024:       Lap blankets; baby blankets; golf towels; beach towels

 

            Class 028:       Flying discs

 

            Class 035:       Providing customer support services in the field of aviation 

 

The application will then proceed with the following goods and/or services in International Classes 009, 011, 012, 014, 016, 018, 020, 021, 025, 028, 035, 036, 037, 040, 041, and 042 only:  

 

International Classes 009:       Wireless ear buds; electric audio speakers; magnetic clips being magnets; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto

 

International Classes 011:       Flashlights for use in the promotion of applicant's commercial and military aircraft and services related thereto

 

International Classes 012:       Aircraft and structural parts therefor

 

International Classes 014:       Ornamental lapel pins; leather key chains; the foregoing for use in the promotion of applicant's commercial and military aircraft and services related thereto

 

International Classes 016:       Pens; letter openers; holders for notepads; document portfolios; calendars; calendar stands; decals; paperweights; desktop business card holders; desk stands and holders for pens; photo albums; photo storage boxes; posters; notebooks; padfolios; blank journal books; name badge holders; magnetic note boards; bookends  

 

International Classes 018:       Umbrellas; carry-all bags; duffel bags; tote bags; attaché cases; shoe bags for travel; luggage tags; wallets; back packs; amenity bags sold empty  

 

International Classes 020:       Plastic cargo boxes; wall plaques made of cork  

 

International Classes 021:       Mugs; tumblers for use in drinking; drinking bottles; non-electric portable beverage coolers; coasters made of metal; insulating sleeve holders made of neoprene for jars, bottles or cans  

 

International Classes 025:       Hats; jackets; shirts; sweat shirts; visors; wind shirts; wind vests; fleece tops; sweaters; baby underclothing  

 

International Classes 028:       Chess sets; divot repair tools for golfers; golf accessory pouches; golf tees; golf balls; golf ball markers; golf bag covers; scale model aircraft; teddy bears; toy banks; toy aircrafts; toy spinners; mini basketball hoops and balls

 

International Classes 035:       Customer services, namely, responding to customers inquiries for others through the use of telecommunication devices and computer networks in the field of avionics

 

International Classes 036:       Financial services, namely, providing loans for aircrafts; providing extended warranties on new and used aircrafts and spare parts for aircrafts           

 

International Classes 037:       Aircraft maintenance and repair services

 

International Classes 040:       Custom manufacture of aircrafts to the specification and order of others

 

International Classes 041:       Educational and training services, namely, conducting classes, workshops and seminars in the field of aviation

 

International Classes 042:       Engineering services in the field of aviation only; Technical support services, namely, troubleshooting in the nature of providing customer support services in the field of aviation

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

COMMENTS

 

Applicant may call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Andrew T. Clark/

Trademark Examining Attorney

Law Office 107

600 Dulany Ave.

Alexandria, VA 22316

(571) 270-7304

andrew.clark@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 04, 2019 for

U.S. Trademark Application Serial No. 87814105

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Andrew T. Clark/

Trademark Examining Attorney

Law Office 107

600 Dulany Ave.

Alexandria, VA 22316

(571) 270-7304

andrew.clark@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 04, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”