Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  September 04, 2019

 

 

INTRODUCTION

This Office action is in response to applicant’s communication filed on August 2, 2019.

 

In a previous Office Action dated May 28, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 2(d) Likelihood of Confusion.  In addition, applicant was required of the following: Identification of Goods Amendment and advised of the following: Prior-Filed Applications and §1(b) & §44(e) Dual Basis Option to Delete §1(b).

 

Based on applicant’s August 2, 2019 response, the trademark examining attorney continues and maintains the 2(d) Likelihood of Confusion Refusal, Prior-Filed Applications Advisory, Identification of Goods Amendment Requirement and §1(b) & §44(e) Dual Basis Option to Delete §1(b) Advisory (see the May 28, 2019 Office action for attachments).  Additionally, applicant must address the new requirement in the summary of issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

The following is a SUMMARY OF ISSUE that applicant must address:

• NEW ISSUE: U.S.-Licensed Attorney, Bar Information and Attestation – Required
• Section 2(d) Likelihood of Confusion – Refusal
• Prior-Filed Applications – Advisory
• Identification of Goods – Amendment Required
• §1(b) & §44(e) Dual Basis Option to Delete §1(b) – Advisory

 

U.S.-Licensed Attorney, Bar Information and Attestation – Required

Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the United States in Canada, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, 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).

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

 

Section 2(d) Likelihood of Confusion – Refusal

The examining attorney notes that applicant stated in its August 2, 2019 response that applicant is in negotiation with the registered owners of Reg. Nos. 5092935 and 5615788.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 5092935 and 5615788.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

Applicant’s mark is “ARTIKA” (in standard character form) for the following goods: “Sinks, Showers, Toilet bowls, Faucets, Shower bases, Shower doors, plumbing fittings, namely, non-metal drain traps, Bathtubs, Whirlpool baths, Bathroom heaters, Shower heads, Bathroom vanity top sinks.; Lighting fixtures, Electric lighting fixtures; LED lighting fixtures, LED solar lights, LED light bars, Flexible LED strip, Exterior and interior light fixtures, light bulbs,” “Medicine Cabinets, bathroom mirrors, towel racks, kitchen cabinets, bathroom cabinets, shower rods,” and “Shower caddies, soap dispensers, paper towel holders, toilet paper holders, laundry rinsing tub.”

 

Registrants’ marks are “ARTICA” (in standard character form) for goods including “LED light bulbs” and “ARTIQUA” (in stylized form) for “Automatic faucets; Bath tubs; Faucet sprayers; Faucets; Hand held shower heads; Lamps; LED lamps; Mixer faucets for water pipes; Plumbing fittings, namely, drains; Plumbing fittings, namely, faucet filters; Shower heads; Standard lamps; Tap water faucets; Taps being faucets; Taps for washstands; Tub parts, namely, tub wastes; Tub spouts; Water conservation plumbing fixtures, namely, faucets, aerators, showerheads, water saving toilets; Strainers for plumbing drains” goods.

 

Comparison of Marks

In the present case, applicant’s mark “ARTIKA” and registrants’ marks “ARTICA” and “ARTIQUA” are highly similar.

 

Applicant’s “ARTIKA” and registrant’s “ARTICA” are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).  There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv).  The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Applicant’s “ARTIKA” and “ARTIQUA” are highly similar because both marks begin with the letters “ARTI” and end with the same letter “A.”  Additionally, the marks only have a slight difference in sound that will not obviate the likelihood of confusion.   Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

Lastly, the fact that Reg. No. 5615788 is in stylized form does not obviate the likelihood of confusion as the wording portion of the mark is the dominant feature of the mark.  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)).

 

Therefore, as all the marks sound similar, applicant’s “ARTIKA” and registrants’ “ARTICA” and “ARTIQUA” are confusingly similar.

 

Relatedness of 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 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).

 

Here, the applicant uses broad wording to describe “Lighting fixtures, Electric lighting fixtures; LED lighting fixtures, LED solar lights, LED light bars, Flexible LED strip, Exterior and interior light fixtures, light bulbs” which presumably encompasses all the goods of the type described, including registrant’s more narrow “LED light bulbs.”

 

Additionally, the applicant’s “Medicine Cabinets, bathroom mirrors, towel racks, kitchen cabinets, bathroom cabinets, shower rods” and “Shower caddies, soap dispensers, paper towel holders, toilet paper holders, laundry rinsing tub” are closely related to registrant’s “Automatic faucets; Bath tubs; Faucet sprayers; Faucets; Hand held shower heads; Lamps; LED lamps; Mixer faucets for water pipes; Plumbing fittings, namely, drains; Plumbing fittings, namely, faucet filters; Shower heads; Standard lamps; Tap water faucets; Taps being faucets; Taps for washstands; Tub parts, namely, tub wastes; Tub spouts; Water conservation plumbing fixtures, namely, faucets, aerators, showerheads, water saving toilets; Strainers for plumbing drains” because all the goods are bathroom-related goods that are often produced, manufactured, and marketed under the same trademark.

 

The evidence (attached in the May 28, 2019 Office action) from Anzzi®, Delta®, Premier Copper Products, and Whitehaus® demonstrate that bathroom sinks, medicine cabinets and mirrors, bath tubs, shower heads, and toilets are commonly manufactured, marketed, and sold together.  Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).  Therefore, as the applicant’s wording of the goods encompass the registrant’s goods, and the remaining bathroom-related goods are commonly manufactured, marketed, and sold together under the same trademark, the bathroom-related goods are related.

 

Because the marks are confusingly similar and because the marks refer to closely related, if not the same, bathroom-related goods and accessories, consumers would be likely to mistakenly believe that the goods emanate from a single source. Accordingly, registration is refused under Trademark Section 2(d).

 

 

Prior-Filed Application – Advisory

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found a mark in a prior-filed pending application that may present a bar to registration under Trademark Act Section 2(d). See TMEP §704.02; see 15 U.S.C. §1052(d).  

 

The filing date of pending U.S. Application Serial No. 88094579 precedes applicant’s filing date.  See attached referenced application in the May 28, 2019 Office action.  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’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.

 

 

Identification of Goods – Amendment Required

In applicant’s August 2, 2019 response, applicant amended the identification of goods to the following:

 

Class 11:  Sinks; Showers; Toilet bowls; Faucets; Shower bases; Shower doors; plumbing fittings, namely, non-metal drain traps; Bathtubs; Whirlpool baths; Bathroom heaters; Shower heads; Bathroom vanity top sinks; Lighting fixtures; Electric lighting fixtures; LED lighting fixtures; LED solar lighting fixtures; LED lighting fixtures in the nature of light bars; Flexible LED strip for decorative purposes; Exterior and interiori light fixtures; light bulbs

 

Class 20:  Medicine Cabinets; bathroom mirrors; towel racks; kitchen cabinets; bathroom cabinets; shower rods

 

Class 21:  Shower caddies; soap dispensers; paper towel holders for household use; toilet paper holders; laundry rinsing tub

 

The identification of goods must be clarified.  See TMEP §§ 1402.01.  Applicant may adopt the following as its identification of goods, if accurate, if “interior” is the correcting wording and not “interiori” in Class 11:

 

Class 11:  Sinks; Showers; Toilet bowls; Faucets; Shower bases; Shower doors; plumbing fittings, namely, non-metal drain traps; Bathtubs; Whirlpool baths; Bathroom heaters; Shower heads; Bathroom vanity top sinks; Lighting fixtures; Electric lighting fixtures; LED lighting fixtures; LED solar lighting fixtures; LED lighting fixtures in the nature of light bars; Flexible LED strip for decorative purposes; Exterior and interior light fixtures; light bulbs

 

Class 20:  Medicine Cabinets; bathroom mirrors; towel racks; kitchen cabinets; bathroom cabinets; shower rods

 

Class 21:  Shower caddies; soap dispensers; paper towel holders for household use; toilet paper holders; laundry rinsing tub

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. If applicant adds a class to the current application, applicant must comply with the multi-class application requirements below.

 

For assistance with identifying and classifying goods and/or services, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

§1(b) & §44(e) Dual Basis Option to Delete §1(b) – Advisory

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e) for goods in International Class 20.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods based on Section 1(b).

 

 

RESPONSE GUIDELINES

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

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 nonfinal Office action  

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

 

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 September 04, 2019 for

U.S. Trademark Application Serial No. 88324878

 

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. 

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

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 September 04, 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.”