UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/3/2019

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Specimen Refusal
• Disclaimer Requirement
• Identification of Goods and Services Requirement
• Multi-Class Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4838374.  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 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 and/or services 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 and/or services.  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.

 

Here, the applicant has applied for the “GOLD COAST K9 SEMPER PARATUS EST. 1991” with a design element for “dog training equipment, namely breaker quick release tools, collars, e-collars, harnesses, leads, sleeves, bite suits” in class 18, “clothing, namely t-shirts, shirts, hoodies; hats” in Class 25, “Dogs” in Class 31, “dog training; training of dogs for others and educational services, namely providing courses of instruction dealing with dogs and the training of dogs; providing information in the field of dog training; training dogs in the field of narcotics detection, guns and explosives detection, mobile odor detection, bed bug detection, and home protection” in Class 41, and “providing dog detection services, namely providing canine teams that detect guns, explosives, narcotics, bed bugs, and mobile odors” in Class 45. The cited registration is for “GOLD COAST” for “food for animals” in class 31.

 

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 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 has applied for the mark “GOLD COAST K9 SEMPER PARATUS EST. 1991” as part of a design element; meanwhile, the registrant’s mark is “GOLD COAST” in standard characters. They have the similar overall commercial impression, because the first two words in each mark are identical.

 

Also, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Here, applicant’s use of a design element does not create a difference in the marks because the registrant’s mark may presented in any manner, including in the same manner as the applicant.

 

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)).

 

In the present case, the attached evidence shows that the wording “K9” in the applied-for mark is merely descriptive of or generic for applicant’s goods and services because it stands for “canine” or dogs, particularly police dogs. See attached evidence from Acronym Finder, available at http://www.acronymfinder.com/Canine-(Dog)-(K9).html; see also attached evidence from The American Heritage Dictionary, available at http://www.ahdictionary.com/word/search.html?q=canine; and attached evidence from MEC Security, available at http://mecsecurity.com/news/what-is-k9-dog/.

 

The “Est. 1991” is merely informational because it only serves to inform consumers that is when the applicant’s business was established.  See attached evidence from Longman, available at  http://www.ldoceonline.com/dictionary/est. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “GOLD COAST” the more dominant element of the mark.

 

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).  The addition of the Latin phrase “SEMPER PARATUS” (meaning “always prepared,” the motto of the U.S. Coast Guard) does not obviate likely consumer confusion. See attached evidence from Collins Dictionary, available at http://www.collinsdictionary.com/dictionary/english/semper-paratus.

 

In the present case, the marks are identical in part. The applicant’s additional terms “K9,” “SEMPER PARATUS,” and “Est. 1991” do not prevent the marks from being regarded as similar for likelihood of confusion purposes. 

 

As such, the marks are similar for Section 2(d) likelihood of confusion purposes.

 

SIMILARITY OF THE SERVICES

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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).

 

The attached Internet evidence, consisting of various pages of the website “Maximum K9 Service,” establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark. See attached evidence from Maximum K-9 Nutrition, available at http://maximumk9service.com/, demonstrating that the same entity provides dog training equipment and aids in Class 18 (available here http://maximumk9service.com/product-category/collars/training-aids), dogs and dog food in class 31 (available here http://maximumk9service.com/dog-sales and http://maximumk9service.com/product-category/dog-food), dog training in class 41 (available here http://maximumk9service.com/obedience), and dog detection services in class 45 (available here http://maximumk9service.com/detection-services).

 

Additionally, the attached Internet evidence from the American Kennel Club, consisting of pages from its website, establishes that the same entity provides the relevant goods and services and markets the goods and services under the same mark, and that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See attached evidence from the American Kennel Club, available at http://www.akc.org/, http://marketplace.akc.org/, and http://shop.akc.org/, showing that the same entity provides dog training supplies in class 18, apparel and clothing in class 25, dogs and dog foods and treats in class 31, and dog training services in class 41.

 

Further, the attached internet evidence from Purina, on how to adopt a dog, shows that the goods, namely dogs and dog food, are used by the same classes of consumers in the same fields of use, i.e. dog owners purchase dog food for their dogs to eat.  See attached internet evidence available at http://www.purina.com/articles/dog/getting-a-dog/how-to-adopt-a-dog; see also, attached website evidence the American Kennel Club, available at http://www.akc.org/expert-advice/nutrition/best-dog-food-choosing-whats-right-for-your-dog/, which identifies how to select dog food for a dog.

 

Lastly, the attached Internet evidence, consisting of website articles about choosing dog food and using dog food in training, establishes that the goods and services, namely food for animals (i.e. dog food) and dog training, are similar or complementary in terms of purpose or function.  See attached website evidence from Pet Expertise, available at http://www.petexpertise.com/train-your-dog-with-kibble/, which explains how and why to use dogs’ regular food to assist with training techniques; see also, attached website evidence from Positively, available at http://positively.com/dog-training/positive-training/using-food-in-training/, which explains the benefits as well as other facts about using dog’s food as a reward during training; see also, attached website evidence from The Dog People, available at http://www.rover.com/blog/favorite-healthy-dog-training-treats/, which discusses the best types of animal treats and foods to train canines.

 

Thus, applicant’s and registrant’s goods and 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).

 

Therefore, because the marks are similar and the goods and services are considered related for likelihood of confusion purposes, applicant’s mark “GOLD COAST K9 SEMPER PARATUS EST. 1991” is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SPECIMEN REFUSALS

 

Specimen Illegible

 

Registration is refused because the specimen in International Classes 18, 25, 31, 41, and 45 are unreadable or illegible, and thus does not clearly show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Deficient Webpage Display for Goods

 

Registration is refused because the webpage specimen in International Classes 18, 25, and 31 are not acceptable displays associated with the goods and appear to be mere advertising material.  See TMEP §904.07(a).  The specimen, thus, fails to show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a). 

 

To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders).  TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012).  If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2).  In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders.  See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).

 

In this case, the specimen for Class 18, 25, and 31 do not include the mark shown associated with applicant’s goods. Rather, the placement of the design mark at the top of the page serves to act as a service mark for retail-store services as opposed to a trademark for goods. See, generally, TMEP §904.03(i)(B)(2). Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b). 

 

Further, the specimen for Class 31 does not include a way of ordering the goods in that there is no “add to cart” feature on the dogs listed and there is a separate link to “view purchasing information,” thus there is no means of ordering the goods present on the specimen.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.  Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a). 

 

SPECIMEN ADVISORY

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to these refusals by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

DISCLAIMER REQUIREMENT

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “K9,” “GOLD COAST,” and “EST. 1991” because it is not inherently distinctive.  These unregistrable terms are at best merely descriptive and primarily geographically descriptive of applicant’s goods and services. 

 

The nondistinctive wording “K9” merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services.  See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012).

 

The attached evidence from Acronym Finder, The American Heritage Dictionary, and MEC Security shows the wording specify descriptive wording means “canines” or dogs, particularly police dogs. See attached evidence from Acronym Finder, available at http://www.acronymfinder.com/Canine-(Dog)-(K9).html; see also attached evidence from The American Heritage Dictionary, available at http://www.ahdictionary.com/word/search.html?q=canine; and attached evidence from MEC Security, available at http://mecsecurity.com/news/what-is-k9-dog/. Therefore, this wording merely describes the purpose and feature, as well as some of the applicant’s goods themselves.

 

In addition, the nondistinctive wording “GOLD COAST” is primarily geographically descriptive of the origin of applicant’s goods and services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a). 

 

The attached evidence shows that “GOLD COAST” is a generally known geographic place or location. See attached evidence from Wikipedia, available at http://en.wikipedia.org/wiki/Gold_Coast; see also, attached website evidence from the Ventura Chamber of Commerce, available at http://ventura.chambermaster.com/list/searchalpha/g, demonstrating that several businesses utilize “GOLD COAST” as part of their entity name; see also, attached example evidence from Gold Coast GeoServices, based out of Camarillo, CA (a city in Ventura County), available at http://www.goldcoastgeoservices.com/, identifying it serves Ventura County, Santa Barbara County, and Los Angeles County; attached evidence from Gold Coast Gymnastics, based out of Ventura, CA, available at http://goldcoastgymnasticsclub.com/; Gold Coast Health Plan, also based out of Camarillo, CA, available at http://www.goldcoasthealthplan.org/about-us/fast-facts.aspx; and attached evidence from California Gold Coast Chapter of the Public Relations Society of America, available at http://www.prsagoldcoast.org/, indicating that it serves Ventura, Santa Barbara, and San Luis Obispo Counties; TMEP §§1210.02 et seq. 

 

The goods and services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address and its own website. See attached website evidence, available at http://www.goldcoastk9.com/about-us/; attached website evidence, available at http://www.goldcoastk9.com/military-and-police/#section-2; see also, TMEP §1210.03.  Because the goods and services originate in this place or location, a public association of the goods and services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

Lastly, applicant must disclaim “EST. 1991” because it is not inherently distinctive.  This unregistrable term at best is merely informational about the goods and services and are commonly used in business; thus the terms do not function as a mark.  See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).

 Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.

The attached evidence from Longman shows that this term is commonly used by businesses as an indicator of when a company was first formed. See attached evidence, available at  http://www.ldoceonline.com/dictionary/est. Because consumers are accustomed to seeing this term commonly used by many businesses to impart information to consumers, they will perceive this term or slogan only as informational matter rather than as a trademark or service mark that identifies the source of applicant’s goods and services.

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “GOLD COAST,” “K9,” or “EST. 1991” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

 

IDENTIFICATION & CLASSIFICATION OF GOODS & SERVICES REQUIREMENT

 

CLASS 18

 

The wording “Dog training equipment, namely, breaker quick release tools, collars, e-collars, harnesses, leads, sleeves, bite suits” in the identification of goods is indefinite and must be clarified because it is unclear as to the purpose, function, or use of some of the goods, and the goods fit into more than one class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may use the following wording, if accurate:

 

Class 9:           “Dog training equipment, namely, breaker quick release tools in the nature of __________ {describe the nature and purpose of the tool, e.g. “retractable folding bar inserted into the mouth of a dog to cause it to release its bite,” etc.}, e-collars for __________ {indicate the purpose or use, e.g. “bark control,” “training purposes,” etc.}, protective bite sleeves, and protective bite suits.”

 

Class 18:         “Dog training equipment, namely, breaker quick release tools, collars, e-collars, harnesses, and leads, sleeves, bite suits.”

 

CLASS 41

 

The wording “training of dogs for others and educational services, namely providing courses of instruction dealing with dogs and the training of dogs” in the identification of services is indefinite and must be clarified because it is unclear as to what specific services are being performed.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

Class 41:         “training of dogs for others; educational services, namely, providing courses of instruction dealing with dogs and training dogs;”

 

CLASS 45

 

The wording “Providing dog detection services, namely providing canine teams that detect guns, explosives, narcotics, bed bugs, and mobile odors” in the identification of services is indefinite and must be clarified because it is unclear what specific services are being performed and it includes services in more than one class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

Class 37:         “Pest control for residential homes, namely, using dog detection for bed bugs.”

 

Class 45:         “Security services for the protection of property and individuals, namely, providing dog detection services in the nature of providing canine teams that detect guns, explosives, narcotics, and mobile odors associated with guns, explosives, or narcotics.”

 

SUGGESTIONS FOR AMENDMENT

 

Applicant may substitute the following wording, if accurate: 

 

Class 9:          “Dog training equipment, namely, breaker quick release tools in the nature of retractable folding bar inserted into the mouth of a dog to cause it to release its bite, e-collars for bark control and training purposes, protective bite sleeves, and protective bite suits.”

 

Class 18:         “Dog training equipment, namely, collars, harnesses, and leads.”

 

Class 25:         “Clothing, namely t-shirts, shirts, hoodies; hats.”

 

Class 31:         “Dogs.”

 

Class 37:        “Pest control for residential homes, namely, using dog detection for bed bugs.”

 

Class 41:         “Dog training; training of dogs for others; educational services, namely, providing courses of instruction dealing with and training dogs; providing information in the field of dog training; training dogs in the field of narcotics detection, guns and explosives detection, mobile odor detection, bed bug detection, and home protection.”

 

Class 45:         “Security services for the protection of property and individuals, namely, providing dog detection services in the nature of providing canine teams that detect guns, explosives, narcotics, and mobile odors associated with guns, explosives, or narcotics.”

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least 7 classes; however, applicant submitted a fees sufficient for only 5 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimens are not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

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

 

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.

 

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 refusals and/or requirements 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.  

 

 

 

/Tyler M. Seling/

Tyler M. Seling, Esq.

Examining Attorney

Law Office 112

(571) 272-0272

Tyler.Seling@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/3/2019 FOR U.S. APPLICATION SERIAL NO. 88327984

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/3/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.