United States Patent and Trademark Office (USPTO)

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

 

 

 

IMPORTANT NOTICE:  APPLICATION IS ABANDONED

Applicant’s Response Is Incomplete

 

 

Issue date:  August 17, 2020

 

 

The application is abandoned because applicant’s response to the final Office action dated 1/29/2020 is not complete for the reasons stated below.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a); TMEP §§718.02, 718.03. 

 

In this case, applicant did not (1) raise a new issue, (2) resolve the outstanding issue in the final Office action, (3) provide any new or compelling evidence with regard to the outstanding issue, or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue.  Additionally, applicant did not timely file a notice of appeal and no time remains in the response period. 

 

Specifically, applicant first repeated the argument made in its previous Office action response that the term “COFFEE” in the applicant’s mark in applicant’s mark distinguishes applicant’s mark, POT HEAD COFFEE, from the registrant’s mark, POTHEADS, because it informs consumers that the goods consist of a coffee product.  Applicant is likely correct that consumers would view the term “COFFEE” would be viewed as describing the applicant’s goods.  However, applicant has provided no clear argument as to why consumers would view this term as distinguishing the source of the applicant’s goods from those of the registrant.  To the contrary, the examining attorney believes that consumers would not view the term “COFFEE” in the applied-for mark as a unique source indicator, particularly in light of the fact the registrant’s goods (“coffee cups” and “coffee mugs”) also relate to coffee.

 

Applicant has also attached a small number of third party applications and registrations to support the argument that consumers would view the additional term “COFFEE” as distinguishing the applicant’s goods from those of the applicant.  However, even if consumers would view the term “COFFEE” as distinguishing applicant’s goods from the registrant’s goods, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

Next, applicant has attached evidence from the registrant’s website to support the argument that the trade channels for the relevant goods differ.  This argument was also made in applicant’s prior Office action response.  Specifically, applicant claims that the registrant’s goods are only sold online on its website, while applicant offers its products exclusively in its brick-and-mortar establishments.  This argument relies upon reading inappropriate limitations into the identification of goods in the registration.  When, as in the present case, the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) ; see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015) (noting that, to the extent that the punctuation in registrant's identification of goods created ambiguity as to the scope of the identification, any doubt must be resolved in favor of the registrant).

 

The evidence attached to the previous Office actions clearly demonstrates that both applicant’s goods and registrant’s goods are commonly provided via the same channels of trade and will be utilized by the same classes of consumers given their complementary nature.

 

Accordingly, applicant’s request for reconsideration did not raise a new issue, resolve the outstanding refusal under Section 2(d) of the Trademark Act, include new or compelling evidence as to the outstanding refusal, or provide any arguments that would persuade the examining attorney to withdraw the refusal.  The application is therefore abandoned.

 

Applicant may file a Petition to the Director Under Trademark Rule 2.146 within two months of the issue date of this notice to request that the abandonment determination be reversed and the application be returned to active status.  TMEP §§715.03(a)(ii)(D), 718.03(b), 1705.04, 1713.01-.02.  However, the Director will grant the petition in rare cases if (1) the USPTO committed a clear procedural error or abuse of discretion, or (2) applicant can show substantial compliance with the response requirements.  TMEP §§715.03(a)(ii)(D), 718.03(b), 1713.01-02.  

 

 

/J. Evan Mucha/

J. Evan Mucha

Examining Attorney

Law Office 106

571-270-1989

evan.mucha@uspto.gov