To: | Logistick, Inc. (trademarks-ch@btlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88248783 - SECURE - 11605 |
Sent: | 3/21/2019 3:17:31 PM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88248783
MARK: SECURE
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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: Logistick, 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: 3/21/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, applicant’s mark is SECURE for “Non-metal cargo braces for the retention of cargo during shipping” in International Class 20.
The registrants’ marks are SECURE SLING & STRAP for “All-purpose nylon straps; All-purpose nylon straps featuring hook and loop fasteners; All-purpose straps comprised of synthetic textile materials; All-purpose tarpaulins of plastic; Anchoring ropes; Arrays of resilient plastic straps that may be arranged in prescribed angular orientations relative to each other to accommodate objects of different sizes, shapes and configurations in any one of a multiplicity of different arrangements; Belts, not of metal, for handling loads; Canvas tarpaulins; Car towing ropes; Cargo and carrier equipment for vehicles comprised of synthetic textile materials, excluding artificial leather, namely, tow ropes, tow straps, ratchet tie-down straps, quick release tie down straps, lashing straps, and tarp straps; Cargo slings of rope or fabric; Chemical fiber nettings; Cotton bags for industrial use; Disposable bulk container liners; Elastic bands for binding; Fabric and polyester mesh net used for storing toys and other household items; Heavy-duty bags for disposal of building materials and refuse; Heavy-duty bags for recycling and disposal of building materials; Heavy-duty bags for recycling and disposal of building materials, roofing shingles, bricks; Horticultural bags and sacks made of woven synthetic or natural fibers or plastics materials, all for use in growing any type of plant, shrub or tree; Industrial packaging containers of textile; Mesh bags for storage; Mountaineering ropes; Natural fibers for use as reinforcements and fillers in composite materials used in the manufacture of a variety of industrial and consumer goods; Non-metal bands for wrapping or binding; Non-metal net wrapping for pallets; Non-metal rigging chains; Non-metal slings for loading; Non-woven polymeric fibers for conversion into a variety of industrial and consumer goods; Nylon fibers for textile use; Nylon strapping or tie downs; Nylon straps for handling loads; Nylon support straps for holding planted trees in an upward position; Nylon tie down straps; Nylon towing straps; Nylon weed trimmer line; Outdoor blinds of textile; Packaging bags of textile material; Packing rope; Polyester fibers; Polyester plastic netting for packaging goods; Polyethylene adhesive patches for repair of torn or damaged high-density polyethylene plastic bags for the storage of construction materials like rocks, bricks, roofing shingles; Polypropylene bags used for the storage of construction materials like bricks, roofing shingles; Polypropylene straps for securing bundles; Protective unfitted liners for the cargo area of vehicles; Ropes; Ropes and synthetic ropes; Ropes for marine use; Ropes, not of metal; Rubber cable ties and straps for fastening and securing objects such as bundles of wire together; Sacks or bags for the transportation or storage of materials in bulk; Sheets of polypropylene netting used for decorating floral and gift arrangements and craft purposes; Synthetic fibers; Synthetic fibers and filaments for use in the manufacture of fabrics, textiles, yarns, and carpets; Synthetic fibres for textile use; Synthetic rope and webbing; Tarpaulins; Tarpaulins; Tarpaulins; Tarpaulins; Tarpaulins made from plastics coated materials; Tents; Tents; Tents comprised primarily of tensile fabric membrane; Tents for mountaineering or camping; Textile bags for merchandise packaging; Textile fibers; Textile fibres; Textile filaments; Tow; Tow ropes for automobiles; True hemp fiber; Twine; Twine for nets; Twine made of paper; Twines; Unfitted covers for boats and marine vehicles; Unfitted liners for the cargo area of vehicles; Unfitted vehicle covers; Vehicle covers, not fitted; Vehicle rescue apparatus, rope cables used to affix between vehicles to pull a jammed or stuck door of one of the vehicles; Wrapping or binding bands, not of metal; Yarn fibers; Slings, not of metal, for handling loads; Cables, not of metal; Glass fiber netting; Hemp; Hemp fibers; Hemp fibres; Hemp nettings; High-density polyethylene plastic bags for the storage of household items; Horticultural bags and sacks, bags and sacks made of woven synthetic or natural fibers or plastics materials, all for use in growing any type of plant, shrub or tree; Jute bags for industrial use; Jute fiber; Shock cords not of metal; Tow ropes for automobiles; True hemp fiber; Twine; Twine for nets; Twine made of paper; Twines” in International Class 22, SECURE LOOPS for “Tie down straps” in International Class 22, and “SECURE-TITE” for All-purpose straps for cargo; non-metal strapping or tie downs for cargo; straps for handling and securing loads; tie down straps for cargo; towing straps for cargo; straps for securing bundles” in International Class 22.
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.
1. Similarity 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)); TMEP §1207.01(b).
Here, applicant’s mark, SECURE, is incorporated in its entirety in each of the registrants’ marks, SECURE SLING & STRAP, SECURE LOOPS, AND SECURE-TITE.
2. Relatedness of the Goods
In this case, the application uses broad wording to describe “non-metal cargo braces for the retention of cargo during shipping,” which presumably encompasses all goods of the type described, including the registrants’ “Cargo and carrier equipment for vehicles comprised of synthetic textile materials, excluding artificial leather, namely, tow ropes, tow straps, ratchet tie-down straps, quick release tie down straps, lashing straps, and tarp straps; Cargo slings of rope or fabric,” “tie down straps,” and “All-purpose straps for cargo; non-metal strapping or tie downs for cargo.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and the registrants’ goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and the registrants’ goods are related.
Based on the analysis above, the applicant’s and the registrants’ goods are related.
3. Conclusion
Because applicant’s and the registrants’ marks are similar and the goods are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
IDENTIFICATION REQUIREMENT
Applicant has identified the following goods and/or services:
International Class 20: “Non-metal cargo braces for the retention of cargo during shipping”
The wording “Non-metal cargo braces for the retention of cargo during shipping” in the identification of goods is indefinite and must be clarified because it is unclear what type of cargo the braces are specially adapted to secure. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language in bold for clarity:
International Class 20: “Non-metal braces specially adapted for use in holding cargo shipping containers”
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.
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.
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.
Mischler, Megan
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@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.