To: | Strategic Partners, Inc. (tfoss@mrllp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88145210 - MGBRANDS - 5769-0125 |
Sent: | 12/11/2018 5:31:20 PM |
Sent As: | ECOM100@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88145210
MARK: MGBRANDS
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Strategic Partners, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 12/11/2018
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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 and/or services. 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.
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)); TMEP §1207.01(b).
Applicant is attempting to register the mark MGBRANDS. The mark MG MARKS GOUGER is registered in stylized letters and the mark MG II is registered in typed format. The marks are similar in sound, appearance, connotation and overall commercial impression because each features the letters “MG.”
Additionally, the term “BRANDS” in the applied-for mark is incapable and therefore contributes little to the overall impression of the mark. 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)). Moreover, the term MG appears to be arbitrary or fanciful. Arbitrary and fanciful terms are considered strong. See In re Emuleux, 6 USPQ2d 1312 (TTAB 1987). The other terms in the registered marks appear to be names or a series number, which drive the commercial impressions of these marks less than the shared term “MG.”
Therefore, despite some differences, the marks are sufficiently similar when compared in their entireties to create consumer confusion or mistake as to the source of the goods.
Applicant is attempting to register its MG mark for a variety of apparel and medical devices, including in particular orthopedic articles, which presumably include the orthopedic prosthesis and full line of orthopedic surgical instruments listed in U.S. Reg. No. 1677487 and the orthopedic articles listed in U.S. Reg. No. 5420443, which also lists suture materials for which applicant seeks registration of its mark.
The remaining goods listed in the application are related in that all are directed to medical professionals. Indeed many of the goods are marketed through the same trade channels to the same consumers. See, e.g., the attached third party registrations that list both sets of goods suggesting that the goods are associated with the same source. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Under these circumstances use of similar MG marks by different parties on the identified goods is likely to lead to consumer confusion or mistake as to the source of the goods.
CLARIFY IDENTIFICATION/CLASSIFICATION OF GOODS
Specifically, medical wearing apparel may fall into either class 25 or class 10 depending on whether the apparel is for surgery (class 10) or not (class 25). Diagnostic thermometers may be in class 9 or class 10 depending on the diagnostic purpose. Only thermometers for medical diagnostic purposes are in class 10. Orthopedic articles must be identified as being for diagnostic or therapeutic use to exclude the possibility of including goods in other classes. Finally, lab coats are in class 25 whether or not they are characterized as medical wearing apparel and/or are treated with an antimicrobial substance.
Applicant must clarify the identification of goods accordingly and adopt the correct classification for the goods. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
Applicant may adopt the following identification, if accurate:
Medical wearing apparel, namely, surgical scrub pants, surgical underscrubs, and surgical belts; medical wearing apparel, namely, surgical scrub tops and jackets; medical wearing apparel, namely, orthopedic shoes; medical wearing apparel, namely, surgical caps; medical gloves; medical gowns; antimicrobial treated medical wearing apparel, namely, surgical scrub tops, surgical scrub pants and gowns; cases fitted for medical instruments and/or for use by doctors; human face protectors, namely, transparent face shields for use in the medical and dental fields; measuring and monitoring devices for medical and medical diagnostic use, namely, sphygmomanometers, blood pressure measuring devices, pulse oximeters, thermometers, otoscopes, ophthalmoscopes, penlights, reflex hammers, stethoscopes, thermometers for medical purposes; medical and surgical instruments namely, bandage scissors, forceps, utility shears, suture materials; orthopedic articles for diagnostic and therapeutic use in class 10;
Scrubs not for medical purposes, namely, scrub tops, scrub pants, underscrubs, scrub jackets; apparel, namely, tops, shirts, blouses, T-shirts, tunics, bottoms, pants, shorts, underwear, skirts, dresses; belts; footwear, namely, shoes; athletic footwear, namely, shoes; insoles; shoe soles; socks; headwear, namely, hats and caps; outerwear in the nature of jackets, coats, sweaters; uniforms; uniforms sold to school, medical, corporate, hospitality, hotel, motel, industrial, markets in uniform departments and specialty uniform stores; children's uniforms and apparel, namely, tops, bottoms, headwear and footwear; nurse's apparel, namely, jackets, pants and tops; antimicrobial treated medical wearing apparel, namely lab coats in class 25.
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.
/Mark Rademacher/
Attorney Advisor
Law Office 100
Trademarks
United States Patent and Trademark Office
(571) 272-9723
mark.rademacher@uspto
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.