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: 5/9/2019

 

 

Applicant’s response of April 12, 2019 is noted.  The amended identification of goods/services has been entered into the record and is largely acceptable subject to the following.

 

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

 

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  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(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

            - Application Serial No(s).  86-730025, 87-628864, 87-789116

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal(s)/requirement(s) is/are continued and MAINTAINED: (1) The section 2(d) refusals; (2) Identification and Classification of Goods and Services as to the limited goods/services discussed below.  Each of the following will be discussed briefly below.

 

PLEASE NOTE:  Application Serial No. 86-328368 has abandoned and is no longer a potential 2(d) cite.

 

Section 2(d) Refusals:  In the Office Action dated October 12, 2019, the examining attorney refused registration of the applicant’s mark, GO and design, because it created a likelihood of confusion with Reg. Nos. 1003552 and 4909267 for the marks GO MART (with the generic MART disclaimed) and GO and design for largely identical goods and services.  The respective refusals were limited as to the respective goods/services of the applicant (in classes 32 and 35), which were largely identical and overlapping and otherwise highly related to those of the registrant.

 

Applicant argues that the respective marks are different in appearance.   While that is true, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).  The respective marks are seen to be highly similar in commercial impression, as well as sound and appearance.

 

With respect to GO MART, mart is seen to be a generic term for the service and has been disclaimed from the mark.  See the attached entry from the American Heritage Dictionary of the English Language, showing the term denotes a store, market or place where goods are sold.  As such the term MART lacks any significant trademark significance.  Absent this generic term, the literal portions of the marks are otherwise the same and applicant’s mark is in a standard character format.  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”).

 

With respect to the cite GO mark for goods in class 32, the literal portions of the mark are the same.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (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)).

 

Accordingly, the respective marks are seen to be highly similar in sound, appearance and commercial impression.  Moreover, the goods/services to which the refusals apply are seen to be largely identical and otherwise highly related goods/services. 

 

Applicant further argues that the term GO is generally weak and even weak as to the cited goods.  However, the term GO standing alone or with a generic term added is fairly strong when considered as to the specific goods/services to which the refusal applies.

 

Therefore, notwithstanding the applicant’s arguments, the similarity of the marks and the identicalness/relatedness of the goods/services and their channels of trade are such that consumer confusion as to source is likely to result.   Accordingly, the section 2(d) refusals are currently MAINTAINED as to the specific goods/services specified in the initial Office Action.

 

Identification and Classification of Goods and Services:    The applicant has generally adopted the identification and classification of goods and services suggested in the Office Action dated October 12, 2019.  However, a number of entries remain indefinite and/or potentially misclassified, specifically the following.  In class 9, the entry “recorded computer program for tracking purchases for tracking purchases and redeeming for goods and services” is indefinite and must indicate what is being redeemed (e.g. customer loyalty points, etc.).  In class 30, the “preparations made from cereal, namely,…” must indicated the finished goods (e.g. crackers, breakfast cereals, etc.) not the ingredient cereals from which the preparations are made.  Additionally, this entry later appears as a duplicate entry and should either be deleted or amended in such a way it is not an exact duplicate.  Also in class 30, “baked preparations, namely, …” should be amended to the common commercial wording of “baked goods, namely,....”.   In class 32, the wording “water enhanced with vitamins” appears twice (within separate entries) and is indefinite.  Applicant should amend this wording to “drinking water enhanced with vitamins.”  Finally, in class 37, it is unclear whether the entry “vehicle service stations for refueling and maintenance” is meant to include the wording “and maintenance.”  If so, the applicant should clarify that it is and the entry will be acceptable.  If not, the entry should be amended to “retail gasoline supply services” and re-classified in international class 35.   Accordingly, the requirement is maintained as to specified entries.  The identification is otherwise acceptable.

 

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.

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

john.yard@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 5/9/2019 FOR U.S. APPLICATION SERIAL NO.88010445

 

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.