To: | Fulltone Musical Products, Inc. (tm-uspto@pearlcohen.com) |
Subject: | U.S. Trademark Application Serial No. 88303296 - SHERPA - T-585323-US |
Sent: | June 30, 2020 09:30:30 AM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88303296
Mark: SHERPA
|
|
Correspondence Address: PEARL COHEN ZEDEK LATZER BARATZ LLP
|
|
Applicant: Fulltone Musical Products, Inc.
|
|
Reference/Docket No. T-585323-US
Correspondence Email Address: |
|
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.
INTRODUCTION
The amended identification and classification of goods requirement as detailed in the April 10, 2019 is maintained and continued.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
The applied-for mark is “SHERPA” for “Electronic effects pedals and stomp boxes for use with musical instruments; Electronic true-bypass effects pedals and stomp boxes for use with musical instruments; Active volume sound effect pedals for musical instruments; Combination true-bypass active volume and wah-wah sound effect pedals for musical instruments with switchable audio buffers, switchable booster with gain range switch, and tuner out jacks; Combination wah-wah and volume sound effect pedals for musical instruments; Combination active wah-wah and electronic effect pedals for use with guitars, bass guitars, and musical instruments, and instructional manuals, sold as a unit; replacement parts for all the aforementioned” in International Class 015.
The registered mark is “SHERPA” for “Downloadable software for controlling microphone settings and for enabling microphone monitoring and for providing user access to associated software updates for microphones” in International Class 009.
Similarities of the Marks
In the present case, applicant’s mark is “SHERPA” and registrant’s mark is “SHERPA”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
Applicant’s goods are related to registrant’s goods. The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
In conclusion, the marks are confusingly similar due to the similarity of the marks and the similarity of the goods.
AMENDED IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIRED
Applicant must clarify the wording “stomp boxes” in the identification of goods because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods. Specifically, this wording could identify goods in more than one international class. For example, “stomp boxes being electronic sound effects pedals” are in International Class 009 and “stomp boxes being percussion instruments” are in International Class 015. The examining attorney has suggested amended language found in applicant’s previous U.S. Registration No. 6009213.
Applicant may substitute the following wording with amended language shown in bold, if accurate:
International Class 009:
“Electronic effects pedals and electronic foot triggered stomp boxes being electronic sound effects pedals for use with musical instruments; Electronic true-bypass effects pedals and electronic foot triggered stomp boxes being electronic sound effects pedals for use with musical instruments; Active volume sound effect pedals for musical instruments; Combination true-bypass active volume and wah-wah sound effect pedals for musical instruments with switchable audio buffers, switchable booster with gain range switch, and tuner out jacks; Combination wah-wah and volume sound effect pedals for musical instruments; Combination active wah-wah and electronic effect pedals for use with guitars, bass guitars, and musical instruments, and parts therefor, and instructional manuals, sold as a unit”
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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.
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action.
/J. Ian Dible/
J. Ian Dible
Examining Attorney
Law Office 111
(571) 272-0209
ian.dible@uspto.gov
RESPONSE GUIDANCE