To: | Fitz All Media Limited (trademark@collenip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88303680 - SUPERPET - Y317 |
Sent: | 5/9/2019 9:59:07 PM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88303680
MARK: SUPERPET
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CORRESPONDENT ADDRESS: COLLEN IP, INTELLECTUAL PROPERTY LAW, P. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Fitz All Media Limited
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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: 5/9/2019
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 so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
In the present case, applicant seeks to register SUPERPET for services that include “production, organisation, management, operation and supervision of trade fairs and shows” and related services. The registered mark is the highly similar SUPER PET EXPO for promoting and conducting trade shows in the field of pet and animal related trade shows.
COMPARISION OF THE MARKS
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
Reasons for similarity of mark
The applicant’s mark and the registrant’s mark both include a form of the wording “SUPER PET.” Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
COMPARISON OF THE GOODS/SERVICES
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Reasons for similarity of goods/services
In this case, the application uses broad wording to describe “production, organisation, management, operation and supervision of trade fairs and shows” which presumably encompasses all services of the type described, including registrant’s more narrow “promoting and conducting trade shows in the field of pet and animal related trade shows.” 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 registrant’s services 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 services 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 registrant’s services are related.
RESPONSE GUIDELINES
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
POTENTIAL CONFLICTING APPLICATION
The filing dates of pending U.S. Application Serial Nos. 88108551, 88052728 and 87730782 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
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.
SIGNED DECLARATION REQUIRED
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF GOODS AND SERVICES
The current identification specifies:
IC 016: Childrens' books, printed matter, manuals; printed publications; instructional and teaching materials; magazines, catalogues, programmes and photographs; diaries, notepads and calendars, greetings cards; writing implements; posters;
IC 035: Production of television and radio advertising; advertising services; business administration and business management services; production, organisation, management, operation and supervision of trade fairs and shows; organisation, operation and supervision of loyalty and incentive schemes; retail services connected with the sale of films and programmes for television and radio, data recordings including video, audio, still, and moving images and texts, computer software, educational software, electronic and video games, instructional and teaching apparatus and instruments, cinematographic and photographic films, sound and video recordings, computer software for use in downloading, storing, reproducing and organising audio, still and moving images and data, CDs, CDIs, CD ROMS, DVDs, discs, cassettes and other data carriers, books, printed matter, manuals, printed publications, instructional and teaching materials, magazines, catalogues, programmes and photographs, diaries, notepads and calendars, greetings cards, writing implements, posters, articles of clothing, t-shirts, rainwear, footwear, headwear, neckwear, gloves, mittens, nightwear, swimwear, underwear, articles of outer-clothing, shirts, sweaters, jumpers, trousers, pants, jeans, tops, scarves and ponchos;
IC 038: Broadcasting services; radio and television broadcasting and transmission services; telecommunications; communications by fibre optic networks, electronic mail;
IC 041: Entertainment services, music and live music entertainment; organisation, promotion, presentation, production and management of musical events, shows, stage events and theatrical performances; live performances; cultural performances; provision of education, training, tuition; entertainment; production, presentation and distribution of audio, video, still and moving images and data; production, presentation, distribution and syndication and rental of radio and television programmes, radio, cable, satellite and internet programmes, sound recordings and video recordings; production, organisation, management, operation and supervision of conferences, seminars, exhibitions, trade shows, festivals, entertainment, music and live music, theatrical performances, cultural performances and organization.
In the Class 16 identification, the applicant must amend the wording “printed matter” and “printed publications” to specify specific items, such as books and booklets. The applicant must also specify the subject matter. For the “manuals,” “instructional and teaching materials,” “magazines,” “catalogues,” and “programmes” the applicant must specify the subject matter or type.
In the Class 35 identification, the wording “production, organisation, management, operation and supervision of trade fairs and shows” must be amended to delete the wording “production” or to clarify the nature of the “production” services.
In Class 35, the wording “organisation, operation and supervision of loyalty and incentive schemes” must be amended to describe specific services. The wording could specify services in more than one international class. The wording could include “customer loyalty services for commercial, promotional and/or advertising purposes” in Class 35 and “loyalty program payment processing services” in Class 36.
In Class 35, the wording “retail services connected with the sale of…” must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring …” “retail distributorships in the field of …” and “retail outlets featuring ….” See TMEP §§1301.01(a)(ii), 1402.11.
In the Class 38 identification of services, the applicant must indicate the specific type of broadcasting services provided, e.g., “video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others.”
Also in Class 38, the wording “telecommunication” is overly broad and must be amended to describe specific telecommunication services, e.g., “telecommunication access services.” The applicant must also clarify the nature of its electronic mail services.
In the Class 41 identification, the applicant must more specifically describe the services. The wording “promotion” in the identification specifies Class 35 services and should be deleted. The applicant must clarify the nature of its “distribution” services. The wording could include Class 39 transportation services.
Applicant may adopt the following wording, if accurate:
IC 016: Children’s books; printed matter, namely, [list specific goods and subject matter, e.g., books and booklets in the field of math]; manuals in the field of [indicate field, e.g., instructional math]; printed publications, namely, [list specific goods and subject matter, e.g., books and booklets in the field of math]; printed instructional and teaching materials in the field of [indicate field, e.g., instructional math]; general feature magazines; magazines featuring [specify type, e.g., computers, travel]; catalogues in the field of [indicate field, e.g., instructional math], programmes, namely, [describe type, e.g., events programmes, souvenir programs concerning {indicate specific subject matter or event}]; photographs; diaries, notepads and calendars, greetings cards; writing implements; posters;
IC 035: Production of television and radio advertising; advertising services; business administration and business management services; production [DELETE], organisation, management, operation and supervision of trade fairs and shows; organisation, operation and supervision of
loyalty and incentive schemes [DELETE]; customer loyalty services for commercial, promotional and/or advertising purposes; incentive award programs to promote the sale of products and
services of others; retail store services and online retail store services, both featuring films and programmes for television and radio, data recordings including video,
audio, still, and moving images and texts, computer software, educational software, electronic and video games, instructional and teaching apparatus and instruments, cinematographic and photographic
films, sound and video recordings, computer software for use in downloading, storing, reproducing and organising audio, still and moving images and data, CDs, CDIs, CD ROMS, DVDs, discs, cassettes
and other data carriers, books, printed matter, manuals, printed publications, instructional and teaching materials, magazines, catalogues, programmes and photographs, diaries, notepads and
calendars, greetings cards, writing implements, posters, articles of clothing, t-shirts, rainwear, footwear, headwear, neckwear, gloves, mittens, nightwear, swimwear, underwear, articles of
outer-clothing, shirts, sweaters, jumpers, trousers, pants, jeans, tops, scarves and ponchos;
IC 036: Loyalty program payment processing services;
IC 038: Broadcasting services, namely, [specify particular broadcasting services, e.g., video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others]; radio and television broadcasting and transmission services; telecommunications, namely, [list specific services, e.g., telecommunications access services]; communications by fibre optic networks; transmission of electronic mail; promotion, for others, of musical events;
IC 041: Entertainment services, namely [list specific entertainment services, .e.g., entertainment in the nature of an ongoing special variety, news,
music or comedy show featuring {indicate subject matter} broadcast over television, satellite, audio, and video media]; live music performances by musical bands;
organisation, promotion,[DELETE] presentation, production and management [DELETE, SPECIFY
CLASS 35 SERVICES] of musical events, shows, stage events and theatrical performances; entertainment services, namely, live [indicate type , e.g., dance, magic, music]
performances; cultural performances, namely, [more specifically describe services, e.g., live dance]; provision of education, namely, [more specifically
describe services and field, e.g., seminars and classes in the field of music], providing training in the field of [indicate field, e.g., music, martial arts]; tuition
services, namely, [more specifically describe services]; entertainment [DELETE]; production, presentation and distribution
of audio, video, still and moving images and data, namely, [more specifically describe services]; production, presentation, distribution and syndication and rental of radio and
television programmes, radio, cable, satellite and internet programmes, sound recordings and video recordings; production, organisation, management [DELETE, CLASS 35
SERVICES], operation and supervision of education conferences, seminars, exhibitions, trade shows [DELETE, CLASS 35 SERVICES], festivals,
entertainment, music and live music, theatrical performances, cultural performances and organization.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
Multi-Class Application – Intent to Use
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least five classes; however, applicant submitted fees sufficient for only four classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
“True” Copy of Foreign Registration Document Required
An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
/Rudy R. Singleton/
U.S. Patent and Trademark Office
Trademark Examining Attorney, Law Office 102
571-272-9262
RUDY.SINGLETON@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.