To: | Cameo China US Inc (info@cameochina.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88029644 - CAMEO - N/A |
Sent: | 12/6/2018 6:16:57 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88029644
MARK: CAMEO
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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: Cameo China US 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: 12/6/2018
This Office action is in response to applicant’s communication filed on October 29, 2018 (“Applicant’s Response”).
In a previous Office action dated October 29, 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
· Trademark Act Section 2(e)(1) for being merely descriptive
In addition, applicant was required to satisfy the following requirements:
· Amend the identification of goods
· Comply with multiple-class application requirements
The trademark examining attorney maintains and now makes FINAL the refusals and requirements 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(e)(1) Refusal – Merely Descriptive – This Partial Refusal is Limited to the Goods Specified Therein
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant did not provide a response to this refusal. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3835590. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Applicant’s mark is CAMEO in stylization for “Ceramics for Household or kitchen utensils and containers, namely, plates, bowls, gravy boats, teapots, tea cups, mugs, jugs, egg cups, saucers, mugs, soy/vinegar bottles, dishes, serving dishes, dinnerware, vases, pots, toothpick holders, chopstick rests, Tea sets; Tea services not of precious metal; Tea pots not of precious metal; beverage glass ware and cooking utensils, namely, serving tray, serving forks, serving dishes, and non-electric pots and pans; Ceramic sculptures, vases, vessels, bowls, plates and pots; Porcelain mugs; Porcelain flower pots; China ornaments; Earthenware, works of art.”
The cited registration is CAMEO in standard characters (Reg. No. 3835590) for “Household or kitchen utensils and containers, namely, plates, bowls, gravy boats, tea pots, tea cups, jugs, egg cups, saucers, mugs, soy/vinegar bottles, dishes, serving dishes, dinnerware, vases, pots, toothpick holders, chopstick rests; beverage glass ware and cooking utensils, namely, serving tray, serving forks, serving dishes, and non-electric pots and pans.”
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
In the present case, the wording in applicant’s mark is CAMEO and registrant’s mark is CAMEO. The wording in 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 virtually 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.
Furthermore, a mark in standard characters, such registrant’s mark, 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, such as applicant’s mark, 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”).
Therefore, applicant’s mark and registrant’s mark share the same commercial impression and are confusingly similar.
Comparison of Goods
In this case, many of the goods in the application and registration are identical. Specifically, both applicant and registrant identify their goods as including “beverage glass ware and cooking utensils, namely, serving tray, serving forks, serving dishes, and non-electric pots and pans.” Additionally, the registration uses broad wording to describe “household or kitchen utensils and containers, namely, plates, bowls, gravy boats, tea pots, tea cups, jugs, egg cups, saucers, mugs, soy/vinegar bottles, dishes, serving dishes, dinnerware, vases, pots, toothpick holders, chopstick rests,” which presumably encompasses all goods of the type described, including applicant’s more narrow “ceramics for household or kitchen utensils and containers, namely, plates, bowls, gravy boats, teapots, tea cups, jugs, egg cups, saucers, mugs, soy/vinegar bottles, dishes, serving dishes, dinnerware, vases, pots, toothpick holders, chopstick rests; tea pots not of precious metal; ceramic vases, bowls, plates, and pots; porcelain mugs.” 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.
Additionally, applicant’s tea sets, tea services, ceramic sculptures and vessels, porcelain flower pots, China ornaments, earthenware, and works of art are related to registrant’s various household utensils, containers, beverage ware, and cooking utensils because these goods are often made, advertised, and sold by the same entities to the same consumers.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act for applicant’s goods.
ADVISORY: OWNERSHIP OF CITED MARK
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 3835590.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Applicant should note the following additional ground for refusal.
Refusal to register the applied-for mark is maintained and made final because the applied-for mark merely describes the feature or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. Applicant’s mark is CAMEO for the relevant goods “Ceramic sculptures; China ornaments; Earthenware, works of art.”
The following evidence and discussion thereof demonstrates that applicant’s mark, CAMEO, is descriptive of its goods. According to the previously attached definition from Merriam-Webster.com, the term “cameo” means “a gem carved in relief, especially: a small piece of sculpture on a stone or shell cut in relief in one layer with another contrasting layer serving as background,” “a small medallion with a profiled head in relief,” or “a carving or sculpture made in the manner of a cameo.” Furthermore, the previously attached evidence from CafePress.com, FineArt.HA.com, MetMuseum.com, and Wikipedia.org shows that sculptures, ornaments, earthenware, and works of art often feature or are described as cameo pieces. As such, this term is descriptive of applicant’s sculptures, ornaments, earthenware, and works of art that are or feature cameos.
Accordingly, the proposed mark CAMEO is merely descriptive of applicant’s “Ceramic sculptures; China ornaments; Earthenware, works of art” goods, and registration is properly refused on the Principal Register under Section 2(e)(1).
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
Applicant did not provide a response to this requirement. The requirement for amendment to the identification of goods is now made FINAL for the reasons set forth below. 37 C.F.R. §§2.32(a)(6), 2.63(b); TMEP §§1402.01, 1402.03.
Additionally, the wording “earthenware, works of art” in the identification of goods for 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 works of art of common metal in International Class 6, works of art of precious metal in International Class 14, works of art made of paper in International Class 16, earthenware tiles and works of art of stone, concrete, or marble in International Class 19, earthenware pulls and works of art made of plaster in International Class 20, and works of art of earthenware in International Class 21. Applicant may substitute the following wording, if accurate:
International Class 21: Ceramics for Household or kitchen utensils and containers, namely, plates, bowls, gravy boats, teapots, tea cups, mugs, jugs, egg cups, saucers, soy/vinegar bottles, dishes, serving dishes, dinnerware, vases, pots, toothpick holders, chopstick rests, Tea sets; Tea services not of precious metal; Tea pots not of precious metal; beverage glass ware and cooking utensils, namely, serving tray, serving forks, serving dishes, and non-electric pots and pans; Ceramic sculptures, vases, vessels, bowls, plates and pots; Porcelain mugs; Porcelain flower pots; China ornaments; works of art of earthenware
For assistance with identifying and classifying goods 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
Applicant did not provide a response to this requirement. The requirement for compliance with multiple-class application requirements is now made FINAL for the reasons set forth below. 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.63(b), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
(1) List the goods 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 already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. 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 class 21; and applicant needs a specimen for any added class. 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.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
/Steven W. Ferrell Jr./
Examining Attorney
Law Office 121
(571) 270-3424
steven.ferrell@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.