United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88049485
Mark: UNIVERSAL
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Correspondence Address: |
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Applicant: sms group inc
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Reference/Docket No. 1812-008TM
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 22, 2020
On October 23, 2018, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 79237079 and 87665213. The following prior-pending applications have abandoned and are no longer a potential bar to the registration of applicant’s mark: Application Serial Nos. 87665213. However, the following prior-pending applications have since registered: Application Serial Nos. 79237079.
Furthermore, this Office action is supplemental to and supersedes the previous Office action issued on October 23, 2018 in connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, the examining attorney did not include a Section 2(e)(1) refusal for being merely descriptive.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
As discussed in the Suspension Letter dated March 27, 2019, the following refusal(s) and/or requirement(s) has been satisfied: failure to show the applied-for mark in use in commerce with any of the specified goods, amend the identification of goods, citizenship was provided, and the response was signed. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5778088. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant has applied to register the mark UNIVERSAL for use in connection with “Manually actuated pump dispensers for attachment to containers for use in dispensing liquids; Plastic spray nozzles” in Class 21.
The cited registration is UNIVERSAL CLOSURES LTD for, in relevant part, “Bottle closures not of metal; plastic stoppers; plastic closures for containers; caps of non-metallic materials and non-paper closures for receptacles in the nature of cartons, containers and bottles; multi-purpose lids of plastic for receptacles other than for household or kitchen use” in Class 20, and “Lids and closures for kitchen receptacles and household receptacles, namely, pot lids and cup lids, not of precious metal or coated with precious metal” in Class 21.
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 [or services] and differences in the marks.”); TMEP §1207.01.
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); 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 Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In this case, applicant’s UNIVERSAL is confusingly similar to registrant’s UNIVERSAL CLOSURES LTD since the marks share an overall similar appearance, meaning, and sound, thus creating a similar commercial impression. 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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, the first word in registrant’s mark is UNIVERSAL, thus it is the dominant portion of the mark. Because applicant’s mark is UNIVERSAL, the dominant parts in both marks are identical, thus the marks have a similar appearance, meaning, and sound, and thus create a similar commercial impression.
Furthermore, matter that is descriptive of or generic for a party’s goods 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 the present case, registrant has disclaimed the wording CLOSURES because it is generic for registrant’s goods, e.g., “bottle closures not of metal; plastic closures for containers; caps of non-metallic materials and non-paper closures for receptacles in the nature of cartons, containers and bottles”. Furthermore, the wording LTD has no source indicating capacity as it is merely an entity designation. Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Son’s” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998). Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording UNIVERSAL the more dominant element of the mark. The fact that UNIVERSAL is disclaimed is not dispositive. Marks must be considered in their entireties; therefore, a disclaimer does not remove the disclaimed portion from the mark for the purposes of comparing marks in a likelihood of confusion determination. 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 Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). The public is generally not aware of disclaimers in trademark applications and registrations that reside only in the USPTO’s records. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1243, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004); In re Nat’l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Furthermore, 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. 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)). Here, the wording in registrant’s mark is the dominant element. Because the initial wording UNIVERSAL is the dominant wording and is identical to applicant’s mark, the marks are confusingly similar.
As such, considered in their entireties and in light of similarity in appearance, sound, connotation, and commercial impression, applicant’s mark and registrant’s mark are confusingly similar pursuant to Section 2(d) of the Trademark Act.
Comparison of the Goods
Therefore, the marks are confusingly similar and the goods are highly related. For these reasons, registration is refused under Section 2(d) of the Trademark Act because a likelihood of confusion exists between applicant’s mark and U.S. Registration No. 5778088.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature 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 has applied for the mark UNIVERSAL for “Manually actuated pump dispensers for attachment to containers for use in dispensing liquids; Plastic spray nozzles” in International Class 21.
A mark is merely descriptive if it describes a feature of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
In this case, the applied-for mark UNIVERSAL merely describes a feature of applicant’s goods, namely that applicant’s goods may be adapted to many different devices. The wording UNIVERSAL is defined to mean “[a]dapted or adjustable to many sizes, uses, or devices”. Furthermore, the wording UNIVERSAL is commonly used in the industry to refer to such adaptable goods that are similar to applicant’s goods. See attached evidence from Amazon, eBay, Salon CA, LORRIC, Fishpond, DHgate.com, and Walmart showing the wording UNIVERSAL to describe pump goods and spray goods that can be adapted to other goods. Therefore, the wording UNIVERSAL merely describes that applicant’s goods are adaptable to many different goods, e.g., are UNIVERSAL.
Accordingly, because the mark UNIVERSAL is merely descriptive for the identified goods, registration of the applied-for mark on the Principal Register is refused under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Derek van den Abeelen/
Trademark Examining Attorney
Law Office 126
(571) 270-3997
derek.vandenabeelen@uspto.gov
RESPONSE GUIDANCE