United States Patent and Trademark Office (USPTO)

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

 

 

 

CORRECTIVE ACTION

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. 

 

 

Issue date:  June 30, 2020

 

 

The following is a new non-final Office action. 

 

On December 10, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87309904.  The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.  However, upon further review, several additional issues have been identified in this case that necessitate the issuance of a new non-final Office action.

 

In a previous Office action dated May 13, 2019, the trademark examining attorney refused registration of the applied-for mark based on the likelihood of confusion with a number of U.S. trademark registrations, under Trademark Act Section 2(d).  The majority of these were maintained in the Suspension Letter of December 10, 2019.  Applicant was also required to amend the identification of its services in International Class 35.

 

Upon further review, it appears that the proposed identification language in Class 35 offered in the Office Action of May 13, 2019 was erroneous and reflected the identifications of applicant’s copending application, in Serial No. 88320596, and vice versa. Essentially, the requirements for amended identifications in International Class 35 in the two co-pending applications were erroneously transposed.  Unfortunately, applicant adopted the improper suggestions in large part. Therefore, the following non-final Office action is issued to correct the prior improperly made identification requirement, revert the identification of services in Class 35 to the original identifications, and enable the applicant to correct course and attempt to resolve the outstanding issues. 

 

Further, it appears that the copending applications in Serial Nos. 88320246 (the instant application) and 88320596 are owned by individuals with the same name and alleged domicile, but with differing citizenship, where one applicant is allegedly a citizen of the United States, but the other, a citizen of China.  As a result, the applications must be presumed to be owned by different applicants, and constitute a potential conflict, until further clarification. Further, a new refusal must be issued under Section 2(d) concerning the registration for EUREKADESK in U.S. Registration No. 5681324 owned by the same individual who is a resident of China.  Applicant is also advised concerning a potential requirement relating to domicile and appointment of U.S. counsel, in case he amends this application to clarify that he is indeed a citizen of China, too.

 

The previously-made refusals under Section 2(d) for likelihood of confusion are maintained and continued.  However, the refusal is made partial herein.

 

In sum, applicant must address the issues in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES that applicant must address:

 

• ADVISORY REGARDING A PRIOR-FILED APPLICATION
• NEW LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)
• AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
• MULTIPLE-CLASS APPLICATION REQUIREMENTS
• MAINTAINED PARTIAL LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)
• OPTIONS WHERE THE REFUSAL PERTAINS TO SOME BUT NOT ALL OF THE GOODS OR SERVICES

 

ADVISORY REGARDING A PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88320596 precedes applicant’s filing date.  See attached referenced application.  This mark appears to be owned by an individual of the same name, but who is a citizen of China. Due to this discrepancy, the applications are presumed to be owned by different entities.

 

If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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 mark in the referenced application.  Applicant may correct the citizenship in one or the other application to the proper citizenship of the applicant.  Notably, if citizenship is amended to reflect that applicant is in fact a citizen of China, applicant will be required to provide additional information and/or appoint a U.S. Counsel.  See the advisory on that below.

 

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.  Upon receipt of applicant’s response resolving the following requirements, action on this application will be suspended pending the disposition of U.S. Application Serial No. 88320546.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

Applicant must also address the following new refusal.

 

NEW LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)

This refusal is limited to services in Class 35 identified as “Web-based catalog services featuring commercial.”

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark EUREKADESK in U.S. Registration No. 5681324.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods or services and similarity of the trade channels of the goods or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of the Parties’ 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

In this case, the applicant’s mark EUREKA GAMING is confusingly similar to the registered mark EUREKADESK because the marks incorporate the same dominant literal element, namely, the word “EUREKA.”

 

This wording appears first in each of the parties’ marks. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Though both marks contain additional wording, this wording is less significant and/or descriptive when used in connection with the goods or services covered by the marks.  In particular, the wording “GAMING” in the proposed mark indicates that the goods and/or services covered by the application pertain to gaming, such as marketing of furniture for gaming.  Similarly, the wording “DESK” in the registered marks is generic or descriptive for desks and desk accessories covered by the registration.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services 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)).  Thus, the wording “EUREKA” is most dominant in the parties’ marks and most significant in affecting their overall commercial impression.

 

For these reasons, the parties’ marks are confusingly similar.

 

Relatedness of the Parties’ Goods and Services

 

In this case, the registrant provides various furniture, such as “computer furniture,” and accessories.  The application covers “Web-based catalog services featuring commercial.”  The wording in the application is sufficiently broad to pertain to goods in any field, and to cover furniture in particular.   Indeed, applicant’s response of October 29, 2019 suggests applicant’s services do feature furniture and “gaming desks.”

 

Though the parties’ goods and services are not identical, they are highly related because the same parties who provide furniture, commonly also provide web-based catalog services featuring that furniture under the same marks through the same trade channels and to the same classes of consumers in the same fields of use.  See for example evidence from the websites of http://www.livingspaces.com, http://www.ballarddesigns.com/, and http://www.ffdm.com. Thus, applicant’s and registrant’s goods and/or services 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).

 

The compared goods and services 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 and/or services] 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).

 

Indeed, the use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

Here, the attached evidence shows that consumers expect the parties’ goods to emanate from the same sources. Therefore, consumers encountering such similar marks for highly related goods and services are likely to confuse the marks and/or mistake the underlying sources of goods and services offered under the marks.  Registration is refused to prevent such confusion.

 

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

 

However, if applicant responds to the refusal, applicant must also note the following.

 

ADVISORY REGARDING DOMICILE AND/OR U.S. COUNSEL REQUIRED

This requirement is only applicable if applicant corrects the citizenship in the instant application to indicate that he is a resident of China.

 

If in response to the potential and actual refusals under Section 2(d) citing conflict with other registered marks, owned by a party of the same name who is a citizen of China, applicant responds and corrects the citizenship in this application to indicate that he is in fact a citizen of China, applicant must then either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189, 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

Where a foreign national lists an address inside the United States or its territories, applicant must either provide documentation to support its U.S. street address as explained below, or appoint a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant provides documentation to support its U.S. street address, the requirement to appoint a U.S.-licensed attorney will be withdrawn.  Alternatively, if applicant appoints a U.S.-licensed attorney, the requirement for documentation will be withdrawn.

 

If the street address of record is applicant’s correct domicile address or if applicant provides a different U.S. street address as the applicant’s domicile address, and applicant elects not to appoint a U.S.-licensed attorney as its representative, then applicant must provide the following documentation to support its U.S. street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; Examination Guide 4-19 (Rev.) at I.A.2. Specifically, applicant must provide documentation showing the name and listed domicile address of the individual, for example one of the following:

           

(1) a current, valid signed rental, lease, or mortgage agreement; or (2) a current valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated within 60 days of the application filing date.

           

Examination Guide 4-19, at I.A.2; see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

Submitted documentation must show the name, listed address, and the date of the document but should redact other personal and financial information. 

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

To provide applicant’s domicile street address if the listed address is not applicant’s correct or current domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  If a different U.S. street address is provided as applicant’s domicile address, applicant must provide the same information and documentation requested above.  Information provided in the TEAS response form will be publicly viewable.

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)       First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)       Use the radio buttons to select “Owner” for the role of the person submitting the form;

(b)       Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)       On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)       Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)       Answer “yes” to wizard question #3 and click “Continue;”

(b)       Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form. 

 

Applicant must also address the following requirements.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In particular, in this case, the application originally identified the goods in International Class 6 as follows: 

 

Class 21: Containers for household use; Containers for household use, namely, glass bulbs; Containers for household use, namely, globes; Utensils for barbecues, namely, forks, tongs, turners; All purpose portable household containers; Brushes for cleaning tanks and containers; Compost containers for household use; Cooking utensil, namely, batter dispenser; Cooking utensils, namely, barbecue branders; Cooking utensils, namely, wire baskets; Household containers of precious metal; Household utensils, namely, graters; Household utensils, namely, kitchen tongs; Household utensils, namely, sieves; Household utensils, namely, skimmers; Household utensils, namely, spatulas; Household utensils, namely, strainers; Household utensils, namely, turners; Insulated containers for food or beverages; Kitchen containers; Kitchen utensil crocks; Kitchen utensil, namely, non-metal flexible lid designed for draining or pressing liquids from a food can; Kitchen utensils, namely, pouring and straining spouts; Kitchen utensils, namely, splatter screens; Lockable non-metal household containers for food; Rotating holders for kitchen utensils; Soap containers; Thermally insulated containers for food; Trash containers for household use; Wood chopping blocks

 

The proposed amendment significantly curtails the prior enumerated goods, but now identifies the following:  “storage for video games” and “metal wire storage namely, wire baskets.”

 

This portion of the proposed amendment is overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  First, the wording “storage” could refer to goods in classes other than Class 21. For example, storage racks for recorded video game programs are in Class 9.  Second, metal baskets are in a number of classes. In particular, baskets of common metals are in Class 6, baskets of precious metal are in Class 14, and metal baskets for household purposes in Class 21.  The proposed amendment is also out of scope of the original, with the closest original entries being items like containers for household use and cooking utensils, namely, wire baskets.  Applicant must amend the wording in the identification of goods to clarify that these are in the nature of containers for household use.

 

Further, the application originally identified the following services in International Class 35: 

 

Class 35: Web-based catalog services featuring commercial; Advertising agencies specializing in design and development of marketing campaigns.; Marketing consulting, namely, market statetegies to promote business; Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites; Providing business information via a web site; Provision of a web site featuring commercial information on shopping

 

However, the proposed amendment identifies the following services:

 

Class 35: Retail furniture stores; Retail shop window display arrangement services; Web-based catalog services featuring furniture for gaming desks; Computerized on-line retail store services in the field of furniture featuring gaming desks; Online retail convenience store services featuring in-store order pickup; Providing business information via a web site; Providing comparisons of web hosting services for commercial purposes; Providing reviews of web hosting services for commercial purposes.

 

Upon further review, it appears that the proposed identification language offered in the Office Action of May 13, 2019 was erroneous and reflected the identifications of applicant’s copending application, in Serial No. 88320596.  Unfortunately, applicant adopted the improper suggestions in large part. However, that does not render the amendments in scope.  The identifications as amended are largely out of scope of the original wording of the instant application, which did not cover a range of retail services and at most covered “Web-based catalog services.”

 

Further, the entry “Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites” is indefinite and overbroad.   This wording must be clarified because the word “designed” in the entry could identify services in more than one class, e.g., “Designing web pages for others” in Class 42 or “Web site traffic optimization” in Class 35, for example. 

 

And finally, the wording “statetegies” in the identification of services appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “strategies.”

 

Applicant may adopt the following wording, if accurate: 

 

Class 21: Containers for household use, namely, glass bulbs, globes; Compost containers for household use; Containers for household use for storing video games; Metal wire storage, namely, wire baskets for household use; Household containers of precious metal; Trash containers for household use.

 

Class 35: Web-based catalog services featuring furniture for gaming desks; Advertising agencies specializing in design and development of marketing campaigns; Marketing consulting, namely, development of market strategies to promote business; Marketing services, namely, providing informational web pages optimized to generate sales traffic via hyperlinks to other web sites; Providing business information via a web site; Provision of a web site featuring commercial information on shopping

 

Class 42: Designing web pages for others to generate sales traffic via hyperlinks to other web sites

 

The applicant should also note the following when amending the identifications:

 

• Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  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 services or add goods and services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b). 

 

• Moreover, the scope of the goods and 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 services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e). 

 

• For guidance on writing identifications of goods and services and classifying them properly, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §§70203(a)(iv), 1402.04.

 

Applicant must also address the following requirement.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 1(b):

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three (3) classes; however, applicant submitted a fee(s) sufficient for only 2 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The previous refusal under Section 2(d) is continued and maintained herein.

 

MAINTAINED PARTIAL LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)

This refusal is limited to services in Class 35 identified as “Advertising agencies specializing in design and development of marketing campaigns.; Marketing consulting, namely, market statetegies [sic] to promote business; Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites; Providing business information via a web site; Provision of a web site featuring commercial information on shopping.”

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the following marks:

 

• EUREKA in U.S. Registration No. 1716374 for “business consulting services for creating, implementing and marketing business products and services.”
• EUREKA! BLITZ in U.S. Registration No. 5296493 for “Business marketing consulting services”
• EUREKA! INVENTING in U.S. Registration No. 4623815 for “Business consultation services; Market research.”
• EUREKA! RESEARCH INTERNATIONAL in U.S. Registration No. 3900736 for “market research services.”
• EUREKA! RANCH INNOVATION ENGINEERING in U.S. Registration No. 3493869
• EUREKA! RESEARCH in U.S. Registration No. 4179678 for “market research services”
• EUREKA! TRIZ in U.S. Registration No. 3887842 for “Business consulting services in the field of providing product development and innovation”

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of the Parties’ 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, the applicant’s mark EUREKA GAMING is confusingly similar to each of the cited registered marks because it incorporates the same dominant literal element, namely, the word “EUREKA.”

 

This wording appears first in each of the parties’ marks. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

To the extent any marks contain additional wording, this wording is less significant and/or descriptive when used in connection with the goods or services covered by the marks.  In particular, the wording “GAMING” in the proposed mark indicates that the goods and/or services covered by the application pertain to gaming, such as marketing of gaming related supplies or equipment.  Similarly, the wording “INVENTING”, “RESEARCH INTERNATIONAL”, “RESEARCH”, and “TRIZ” in the registered marks owned by the Eureka! Institute, Inc. are also descriptive or generic for the types of marketing services provided by the registrant.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services 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)).  Thus, the wording “EUREKA” is most dominant in the parties’ marks and most significant in affecting their overall commercial impression.

 

For these reasons, the parties’ marks are confusingly similar.

 

Relatedness of the Parties’ Services

 

In this case, the proposed mark is also intended to cover “Web-based catalog services featuring commercial; Advertising agencies specializing in design and development of marketing campaigns.; Marketing consulting, namely, market statetegies [sic] to promote business; Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites; Providing business information via a web site; Provision of a web site featuring commercial information on shopping.”

 

Although not identical to the services covered by the registrations, these services are highly related or overlap.  In particular, applicant’s “Advertising agencies specializing in design and development of marketing campaigns.; Marketing consulting, namely, market statetegies [sic] to promote business; Marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites” services overlap with the “business consulting services for creating, implementing and marketing business products and services” covered under EUREKA in U.S. Registration No. 1716374, because marketing products and services can and commonly does encompass marketing consulting in the nature of marketing campaigns. See previously attached evidence from http://immediatemarketing.com/, http://professionalpunch.com/, http://mercadeoconsulting.com, and www.lucidbusiness.com/.   Further, agencies that perform marketing for others, commonly operated websites that provide commercial or business information pertaining to their customers. See attached evidence from http://www.lyfemarketing.com/ and http://www.thecommerceshop.com/ecommerce-digital-marketing-services/.  Similarly, marketing services are highly related to market research services covered under various Eureka! Institute registrations because they are complementary, market research ideally informing marketing strategy development, and often provided by the same entities. See previously attached evidence from www.marshallstrategy.com, www.bluetreedigital.com, and www.goldfishconsulting.com.   

 

The compared services 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 and/or services] 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). Such is the case here.

 

The attached evidence shows that consumers expect the parties’ services to emanate from the same sources. Therefore, consumers encountering such similar marks for highly related services are likely to confuse the marks and/or mistake the underlying sources of services offered under the marks.  Registration is refused to prevent such confusion.

 

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

OPTIONS WHERE THE REFUSAL PERTAINS TO SOME BUT NOT ALL OF THE GOODS OR SERVICES

 

Where the refusal pertains to some but not all of the goods or services, applicant may also respond by doing one of the following:

 

(1)  Deleting the goods and/or services to which the refusal pertains;

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

LEGAL COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

/Valeriya Painter/

Examining Attorney

Law Office 121

(571) 270-7132

valeriya.painter@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 June 30, 2020 for

U.S. Trademark Application Serial No. 88320246

 

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. 

 

 

/Valeriya Painter/

Examining Attorney

Law Office 121

(571) 270-7132

valeriya.painter@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 June 30, 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.”