To: | Mike Lindell Products, LLC (info@simonelliip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88053533 - MYSTORE.COM - 0158.3005.1 |
Sent: | 9/13/2018 3:36:33 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88053533
MARK: MYSTORE.COM
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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: Mike Lindell Products, LLC
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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: 9/13/2018
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.
LIKELIHOOD OF CONFUSION:
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5022398, 5271787, 4856554, 4779315, 4411779, 4095567, 5137195, 4935510, 3319834, & 3337015. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.
Applicant’s mark is MyStore.com for “Advertising and information distribution services, namely, online and telephone ordering services provided over the internet and through direct response television, radio and direct mail advertising and catalogs featuring a wide variety of goods; Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications; and retail store services featuring the goods of others provided via downloadable mobile applications, wireless communications”.
The cited marks are:
Mycontactsstore (stylized) for “On-line retail store services featuring contact lenses and eye care products.” (Reg. No. 5022398).
MY CLIP STORE for “Downloadable film clips, photographs, and other multimedia materials featuring adult entertainment provided via a website.” (Reg. No. 5271787).
MY PET FOOD STORE for “Retail store services featuring pet food, pet supplies, and pet accessories.” (Reg. No. 4856554).
MY TOY STORE for “bumper stickers” and “shirts; sweatshirts”. (Reg. No. 4779315).
MY KITCHEN SUPPLY STORE (stylized) featuring chef hats for “Retail store and on-line retail store services featuring kitchen goods, supplies and equipment for commercial and residential use.” (Reg. No. 4411779).
MY STORE for “Distributorship in the field of consumer goods and groceries; wholesale distributorship of consumer goods and groceries.” (Reg. No. 4095567).
MY CAR STORE featuring oval and car design for “Automobile dealerships; Dealerships in the field of used vehicles.” (Reg. No. 5137195).
MY EQUINESTORE ONLINE featuring pill designs for “Retail online ordering services for animal supplies, animal products and pharmaceuticals for animals only available to the clientele of a veterinarian after authorization of the veterinarian with the retail online ordering service.” (Reg. No. 4935510).
MI TIENDA for “Retail grocery store services.” (Reg. No. 3319834). This mark translates to “my store”.
MI TIENDA (stylized) featuring a sun design for “Retail grocery store services.” (Reg. No. 3337015). This mark translates to “my store”.
The goods and services of the respective parties are closely related. Applicant’s ID includes the broad wording “a wide variety of goods” and “the goods of others”. As such, it can be presumed that applicant’s ID encompasses the goods described in the cited registrations. Put in another way, applicant’s ID covers all goods and as a result this includes the specific goods and services selling those particular goods identified in the registrations.
Applicant’s and registrants’ marks are highly similar. All the marks conjure the impression of a place where merchandise is offered for sale that belongs to a particular person. See attached online dictionary definitions of the words “my” and “store”.
Reg. Nos. 3319834 & 3337015 is in Spanish, which is a common, modern language in the United States. See In re Aquamar, Inc., 115 USPQ2d 1122 (Spanish).
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States. Reg. Nos. 3319834 & 3337015 translates to “my store”. See translation statement in registrations.
For the reasons discussed above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
POTENTIAL 2(d) REFUSALS:
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF SERVICES:
Class 35 -
In Class 35, applicant’s identification is: “Advertising and information distribution services, namely, online and telephone ordering services provided over the internet and through direct response television, radio and direct mail advertising and catalogs featuring a wide variety of goods; Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications; and retail store services featuring the goods of others provided via downloadable mobile applications, wireless communications.”
The following wording is unacceptable:
“Retail store services featuring the goods of others provided via downloadable mobile applications, wireless communications” is indefinite. The type of goods must be stated. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 35: Advertising and information distribution services, namely, online and telephone ordering services provided over the internet and through direct response television, radio and direct mail advertising and catalogs featuring a wide variety of goods; Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications; retail store services featuring {indicate type of goods – e.g. clothing} of others provided via downloadable mobile applications and wireless communications
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@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.