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:  October 29, 2019

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on September 25, 2019.

 

In a previous Office action dated April 16, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Partial Section 2(d) Refusal – Likelihood of Confusion. 

 

For the reasons explained below, 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

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4390901.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

Applicant has applied for the mark COMBO PANDA, in standard character form, for use in connection with the following goods:

           

Class 11:  Electric kitchen appliances, namely, electric casseroles, electric woks, electric saucepans, electric toasters; Cooking and kitchen apparatus, namely, cooktops and microwave ovens; Appliances, equipment and installations in this class, namely, refrigerating appliances and installations, electric appliances for making yogurt, ice cream and slushies; domestic electric appliances in the nature of frypans; Electric torches for lighting including handheld electric torches; Hot water bottles; Heating or cooling packs filled with chemical substances ready to react when required to warm or cool the body; Appliances, apparatus, equipment and installations for heating, cooling, drying, steam generating, cooking, lighting, refrigerating, ventilating and water supply in this class, namely, cooking stoves, lighting installations and refrigerating machines; Electrical coffee making apparatus; Ice machines for making slushies; Electric snack makers, namely, electric toasters; Electric sandwich presses; Electric sandwich toasters; Electric toasters; Electric toaster ovens; Electric counter top cooking ovens; Baking machines for bread, cookies, cakes, pastries and snacks; Automatic bread makers, namely, automatic bread-making machines for domestic use; Electric cake makers; Electric rice cookers; Electric slow cookers; Electric pressure cookers; Electric saucepans; Electric pressure cooking saucepans; Electric kettles; Electric beverage warmers in the nature of jugs; Apparatus for instant hot water supply, namely, electric tea and coffee kettles; Water filters; Electric food steamers; Electric waffle makers and electric waffle irons; Electric egg cookers; Frozen dessert makers, namely, electric ice cream, yogurt and slushy makers; Electric ice cream making machines; Electric popcorn poppers; Electric grills; Portable electric grills and barbecues; Electric woks, skillets and griddles; Milk frothers electric; Electric tea makers, namely, electric tea pots; Water coolers; Refrigerators for foodstuffs; Combinations of refrigerators and freezers; Domestic refrigerators; Electric hot plates

 

Registrant owns a registration for the mark PANDA, in standard character form, for use in connection with the following goods:

 

Class 11:  Apparatus and installations for decomposing toxic substances in water; Baking ovens; Barbecue grills; Barbecues; Beverage-cooling apparatus; Commercial and industrial cookware, namely, gas and electric boilers, gas and electric broilers, gas and electric roasters, gas and electric braising pans; Cooking ranges; Deep fryer, electric; Electric coffee percolators; Electric cooking stoves; Electric foods warming units for institutional food services; Electric griddles; Electric grills; Electric kettles; Electric rice cooker; Exhaust hoods for kitchens; Freezers; Gas stoves; Ice machines and apparatus; Microwave ovens; Plate warmers; Refrigerated self-service cases, refrigerated self-service deli cases and custom fabricated refrigeration systems used by supermarkets and convenience stores to store and display food and beverage products and structural parts and fittings therefor; Refrigerating cabinets; Refrigerating display cabinets; Refrigerators; Rotisseries; Sinks; Ventilation hoods; Walk-in coolers; Walk-in freezers

 

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.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

In this case, the marks PANDA and COMBO PANDA are confusingly similar because they share the same word “PANDA”.

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Applicant argued that the additional wording “COMBO” obviates a likelihood of confusion. However, the only difference between the applied-for and registered marks is that the applied-for mark contains the additional word “COMBO.”  Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

In addition, the word “COMBO” does not significantly alter the commercial impression in a manner that obviates confusion.  Rather, both the applied-for mark, COMBO PANDA, and the registered mark, PANDA, connote the overall commercial impression of the animal known as a panda.  Therefore, the marks are not only similar in sound and appearance because they are identical in part, but they share a highly similar overall connotation and commercial impression.  As such, the marks are confusingly similar for likelihood of confusion purposes.

 

Applicant argued that the mark “COMBO PANDA” is famous amongst a specific and specialized group of consumers. However, it is unclear how this argument is relevant to the current proceeding. The relevant DuPont factor related to fame of the cited mark, not fame of the applied-for mark. TMEP §1207.01(d)(ix). It is unclear how the fame, if any, of the applied-for mark would obviate a likelihood of confusion.

 

Finally, applicant argued that the cited mark does not appear to be in use. However, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

Relatedness of the Goods

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration 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)). 

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

In this case, both applicant and registrants goods include cooktops, grills, coffee makers, stoves, griddles, refrigerators and freezers, kettles, rice cookers, microwave ovens, and ice machines.   In addition, the remaining applied-for goods electric kitchen-related goods are related to the registered goods because they are commonly offered under the same brand name.

 

The previously attached Internet evidence, consisting of screenshots of webpages from entities offering the applied-for kitchen appliances and electric kitchenware and the registered kitchen appliances and electric kitchenware, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark.  Please see http://bellahousewares.com/, http://www.kitchenaid.com/, http://www.cuisinart.com/.  Thus, applicant’s and registrant’s 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).

 

The examining attorney now further makes of record the following evidence showing that the same entity commonly manufactures the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function (http://thorkitchen.com/?gclid=CjwKCAjwxt_tBRAXEiwAENY8hZ48IF9_W_qY-e3MB2YOYLfo06UN8V1lHabWlo1YmRhdR27TfMbUnhoCpoUQAvD_BwE; http://veronaappliances.com/; http://www.geappliances.com/).  Thus, applicant’s and registrant’s 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).

 

Applicant argued that the goods would not travel in the same trade channels as registrant’s goods based on extrinsic evidence of use, marketing, and fame. The determination of relatedness is based on the description of the goods in the application and registration 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)).  There is nothing in applicant’s or registrant’s identifications that limit the scope of their protection or limit the channels of trade; therefore, the goods 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)).  

 

Applicant additionally argued that their goods will be marketed to children and their parents “hoping to pick up a toy for their children.” However, applicant’s identified goods are not toys. Applicant’s goods, as identified, are highly similar to registrant’s goods and would travel in the same channels based on the explanations and evidence above.

 

Conclusion

 

The similarity between applicant and registrant’s marks and goods is likely to cause consumers to be confused, mistaken, or deceived as to the source of the goods.  Accordingly, applicant’s mark must be refused registration under Section 2(d) of the Trademark Act.

 

ADVISORY: PARTIAL ABANDONMENT

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 011 will be deleted from the application:  “Electric kitchen appliances, namely, electric casseroles, electric woks, electric saucepans, electric toasters; Cooking and kitchen apparatus, namely, cooktops and microwave ovens; Appliances, equipment and installations in this class, namely, refrigerating appliances and installations, electric appliances for making yogurt, ice cream and slushies; domestic electric appliances in the nature of frypans; Electric torches for lighting including handheld electric torches; Hot water bottles; Heating or cooling packs filled with chemical substances ready to react when required to warm or cool the body; Appliances, apparatus, equipment and installations for heating, cooling, drying, steam generating, cooking, lighting, refrigerating, ventilating and water supply in this class, namely, cooking stoves, lighting installations and refrigerating machines; Electrical coffee making apparatus; Ice machines for making slushies; Electric snack makers, namely, electric toasters; Electric sandwich presses; Electric sandwich toasters; Electric toasters; Electric toaster ovens; Electric counter top cooking ovens; Baking machines for bread, cookies, cakes, pastries and snacks; Automatic bread makers, namely, automatic bread-making machines for domestic use; Electric cake makers; Electric rice cookers; Electric slow cookers; Electric pressure cookers; Electric saucepans; Electric pressure cooking saucepans; Electric kettles; Electric beverage warmers in the nature of jugs; Apparatus for instant hot water supply, namely, electric tea and coffee kettles; Water filters; Electric food steamers; Electric waffle makers and electric waffle irons; Electric egg cookers; Frozen dessert makers, namely, electric ice cream, yogurt and slushy makers; Electric ice cream making machines; Electric popcorn poppers; Electric grills; Portable electric grills and barbecues; Electric woks, skillets and griddles; Milk frothers electric; Electric tea makers, namely, electric tea pots; Water coolers; Refrigerators for foodstuffs; Combinations of refrigerators and freezers; Domestic refrigerators; Electric hot plates”. 

 

The application will then proceed with the following goods in International Class 011 only:  “Apparatus for lighting, namely, lighting installations; Apparatus for lighting, namely, lighting installations for use in kitchens; Apparatus for lighting powered by electricity, namely, electric lighting fixtures; Light bulbs for lighting; Diffusers being parts of lighting apparatus; Diffusers being parts of lighting installations; Electric apparatus for lighting, namely, electric lighting fixtures, night lights, battery-operated night lights and lamps; Electric indoor lighting apparatus, namely, electric lighting fixtures for indoor use; Electric indoor lighting installations; Electric lighting apparatus, namely, lighting installations, night lights, battery-operated night lights and lamps; Electric lighting fittings for ceiling lights; Electric lighting installations; Electric lighting installations for interior use; Electrical appliances for lighting, namely, electrical sconce lighting fixtures, pendant lighting fixtures, arc lamps, night lights, battery-operated night lights, lighting fans and lighting fixtures with motion detection; Electrical installations for lighting; Electrical lamps for indoor lighting; Electrical lighting fixtures; Filters for lighting apparatus; Filters for lighting appliances; Filters for use with lighting apparatus; Indoor electrical lighting fixtures; Indoor fluorescent electrical lighting fittings; Indoor fluorescent lighting fixtures; Installations for electric lighting; Installations for lighting; Lighting apparatus as an integral part of kitchen furniture, namely, lighting tracks; Lighting apparatus utilising light emitting diodes (leds), namely, LED light fixtures; Lighting elements, namely, light bulbs, lighting tracks, lighting tubes, and lighting installations; Lighting fixtures; Lighting fixtures for household use; Electric cooling fans; Electric fans for personal use; Electric fans for ventilation; Electric blankets for household purposes in this class.”  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this 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(s) and/or requirement(s) in this 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 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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Kristin Williams/

Kristin Williams

Examining Attorney

Law Office 105

(571) 270-1942

kristin.williams@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 October 29, 2019 for

U.S. Trademark Application Serial No. 88320905

 

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. 

 

 

Williams, Kristin

/Kristin Williams/

Kristin Williams

Examining Attorney

Law Office 105

(571) 270-1942

kristin.williams@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 October 29, 2019, 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.”