Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  January 06, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 7, 2019.

 

In a previous Office action dated May 10, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with two registered marks. In addition, applicant was required to satisfy the following requirements:  clarify the mark description, amend the identification of goods, fulfill multiple class application requirements and provide a foreign registration certificate.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: clarify the mark description, amend the identification of goods, fulfill multiple class application requirements and provide a foreign registration certificate.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 5505438 and 5471099.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). See the registrations attached to the Office Action dated May 10, 2019 at p. 2-6.

 

The applicant has applied to register the mark MOJO in a stylized format with rectangle design for “Vibromassage apparatus; massage apparatus; adult sexual stimulation aids, namely, vibrators; sex toys” in class 010.

 

The mark in Registration No. 5505438 is DIGITMOJO in standard character format for in pertinent part “condoms; massage apparatus” in class 010.

 

The mark in Registration No. 5471099 is MT. MOJO in standard character format for “Condoms” in class 010.

 

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 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. 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.

 

Comparison 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).

 

 

 

In this case, applicant’s mark MOJO is confusingly similar to the marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099. Specifically, MOJO in applicant’s mark is highly similar in sound and appearance to the MOJO in registrants’ marks in Registration Nos. 5505438 and 5471099. Further, this shared word means “a magic charm, talisman, or spell.” See the evidence attached to the Office Action dated May 10, 2019 at p. 7.

 

Moreover, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In this case, even though applicant’s mark has a design, the dominant portion of the mark is the word MOJO, which is identical to the word MOJO in registrants’ marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099. Thus, the marks are identical in part.

 

In addition, the wording in applicant’s mark MOJO is wholly encompassed within the registrants’ marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099, thus, purchasers are likely to believe that registrants’ marks merely identify additional lines of condom and massage apparatus goods. Specifically, purchasers are likely to believe that the marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099, identify new lines of condom and massage apparatus goods offered under the MOJO line of vibromassage apparatus, massage apparatus, vibrator and sex toy goods. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Additionally, although applicant’s mark does not contain the entirety of the registered marks in Registration Nos. 5505438 and 5471099, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks in Registration Nos. 5505438 and 5471099 because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

 

Furthermore, registrants’ marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099 are in standard character format, which means the registrants’ can put their marks in any design, therefore, applicant’s design elements do not rule out the similarity of the word MOJO in the marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In summary, because of the contemporaneous use of the distinctive word MOJO, it follows that purchasers are likely to believe that the marks identify the same source for vibromassage apparatus, massage apparatus, vibrator, sex toy and condom goods. Thus, the marks are confusingly similar.

 

Applicant’s Arguments

 

Applicant submitted a printed or electronic copy of a use-based application for a mark containing the word MOJO to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. See Response to Office Action dated November 7, 2019 at p. 2, 4, 12-13 & 36-37. However this is unpersuasive, because third-party applications are evidence only that the applications were filed; they are not evidence of use of the mark. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); see In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); TBMP §1208.02; TMEP §710.03.

 

Applicant has submitted printed or electronic copies of four third-party registrations for marks containing the word MOJO to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. See Response to Office Action dated November 7, 2019 at p. 2-4, 6-11, 14-17, 30-35 & 38-41. Three of these registrations with Registration Nos. 3688625, 4472063 and 4979318 appear to be for goods and services similar to the goods identified in applicant’s application, but one of the registrations with Registration No. 5211983 appear to be for services that are predominantly different from or unrelated to the goods identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018).  Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the word MOJO is weak or diluted. 

 

In addition, evidence comprising third-party registrations for similar marks with different or unrelated goods and services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, the third-party registration submitted by applicant is insufficient to establish that the word MOJO is weak or diluted. 

 

Additionally, the third party registrations co-exist, because they all contain additional distinctive wording that distinguishes the marks from one another, whereas applicant’s mark just consists of the word MOJO. Therefore, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Applicant’s mark does not create a distinct commercial impression from the registered marks in Registration Nos. 5505438 and 5471099 because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

 

Furthermore, third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

 

Applicant primarily argues applicant’s mark is dissimilar in appearance, sound and connotation from registrants’ marks, because applicant’s mark is a two-syllable dictionary word combined with distinctive design elements and has the connotation of a magic charm, talisman or spell, whereas registrant’s mark DIGITMOJO is a four-syllable fanciful word created by joining together two ordinary words with the dominant first two-syllables being DIGIT and has the connotation of a finger, toe or a symbol of a number system combined with a magic charm, talisman or spell and registrant’s mark MT. MOJO is a three-syllable two-word mark with the dominant, first word being MT., which is universally understood as an abbreviation of mountain and has the connotation of the name of a mountain that does exist, Mount Mojo. See Response to Office Action dated November 7, 2019 at p. 3, 4-5 & 43. However this is unpersuasive, because the dominant portion of applicant’s mark is the word MOJO, which is identical to the word MOJO in registrants’ marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Moreover, the wording in applicant’s mark MOJO is wholly encompassed within the registrants’ marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099, thus, purchasers are likely to believe that registrants’ marks identify new lines of condom and massage apparatus goods offered under the MOJO line of vibromassage apparatus, massage apparatus, vibrator and sex toy goods. In addition, applicant’s mark does not create a distinct commercial impression from the registered marks in Registration Nos. 5505438 and 5471099 because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks. Furthermore, registrants’ marks DIGITMOJO in Registration No. 5505438 and MT. MOJO in Registration No. 5471099 are in standard character format, which means the registrants’ can put their marks in any design, therefore, applicant’s design elements do not rule out the similarity of the word MOJO in the marks. Therefore, the marks are identical in part and confusingly similar.

 

Comparison of the Goods

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The applicant’s goods are “Vibromassage apparatus; massage apparatus; adult sexual stimulation aids, namely, vibrators; sex toys” in class 010.

 

The registrant’s goods in Registration No. 5505438 are in pertinent part “condoms; massage apparatus” in class 010.

 

The registrant’s goods in Registration No. 5471099 are “Condoms” in class 010.

 

As the case law and attached evidence shows, the applicant's vibromassage apparatus, massage apparatus, vibrator and sex toy goods, registrant’s massage apparatus and condom goods in Registration No. 5505438 and registrant’s condom goods in Registration No. 5471099 are commercially related, because applicant and registrant in Registration No. 5505438 provide the identical goods of massage apparatus and many companies provide these types of goods.

 

When analyzing an applicant’s and registrants’ goods for similarity and relatedness, that determination is based on the description of the goods in the application and registrations at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the “massage apparatus” goods in the application and registration with Registration No. 5505438 are identical. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s “massage apparatus” goods are related.  

 

Moreover, the attached Internet evidence consists of screenshots from Durex, Walmart, Maude, KY, Emojibator, Glyde, Lifestyles, Adam & Eve and Lelo. See the evidence attached to the Office Action dated May 10, 2019 at p. 8-21, http://www.glydeamerica.com/adult-toys/, http://www.glydeamerica.com/glyde-ultra-medium-vegan-condoms/, http://www.lifestyles.com/vibrating_device/vibes/, http://www.lifestyles.com/vibrating_device/amuse-his-and-hers-pleasure-massager-2/, http://www.lifestyles.com/vibrating_device/amuse-bullet-pleasure-massager/, http://www.lifestyles.com/condom/premium-pack/, http://www.adameve.com/adult-sex-toys/vibrators-c-1011.aspx?brand=Adam+and+Eve, http://www.adameve.com/sexy-extras/condoms-c-989.aspx?brand=Adam+and+Eve, http://www.lelo.com/hex-condoms-original and http://www.lelo.com/sex-toys-for-women. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrants’ goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Furthermore, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with “vibromassage apparatus; massage apparatus; adult sexual stimulation aids, namely, vibrators; sex toys; condoms”, which are the same goods of both applicant and registrants in this case. This evidence shows that the goods listed therein, namely, “vibromassage apparatus; massage apparatus; adult sexual stimulation aids, namely, vibrators; sex toys; condoms”, are of a kind that may emanate from a single source under a single mark.  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). See the attached third party registrations.

 

Accordingly, purchasers are likely to be confused as to the source of the goods when they encounter vibromassage apparatus, massage apparatus, vibrator, sex toy and condom goods offered under highly similar marks. Therefore, applicant's goods and registrants’ goods are considered related for likelihood of confusion purposes.

 

Please note, applicant presented no evidence or arguments in support of registration concerning the relatedness of the goods.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In summary, the marks are confusingly similar and the goods are related.  Therefore, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Considering all of the above, the applied-for mark is refused registration under Trademark Act Section 2(d). The refusal is hereby made FINAL.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. 

 

ASSISTANCE ADVISORY

 

Please call or email the assigned trademark examining attorney with questions about this final Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal in this final Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  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.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 06, 2020 for

U.S. Trademark Application Serial No. 88314323

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 06, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”