To: | Christopher Egan (christopher_r_egan@icloud.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88341822 - KOALA PACK - N/A |
Sent: | 4/10/2019 7:51:23 PM |
Sent As: | ECOM113@USPTO.GOV |
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88341822
MARK: KOALA PACK
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Christopher Egan
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/10/2019
TEAS PLUS 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 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 applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The applicant must address:
Also contained herein is a prior-filed applications advisory.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is KOALA PACK for a variety of batteries and chargers therefor, and the registrants’ marks are KOALA MOUNT (U.S. Registration No. 4567415) for wall mounts for a variety of electronic devices and KOALATYPE (U.S. Registration No. 5721806) for a variety of goods in Class 9.
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 and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, encompassing goods, and similarities 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 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).
Here, the applicant's standard character mark KOALA PACK is confusingly similar to the registrants’ standard character mark KOALA MOUNT (U.S. Registration No. 4567415) and stylized mark KOALATYPE (U.S. Registration No. 5721806).
Specifically, the applicant’s and registrants’ marks begin with the same distinctive wording KOALA, which is identical in appearance, sound, and commercial impression, namely, evoking “[a]n arboreal Australian marsupial (Phascolarctos cinereus) that has dense grayish fur, large ears, and sharp claws and feeds chiefly on the leaves of eucalyptus trees.” http://www.ahdictionary.com/word/search.html?q=koala. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark. 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”). Because KOALA is the first wording in the marks, consumers will focus on this wording for source identification, thereby making it the dominant feature of the marks.
Though the applicant and registrant (U.S. Registration No. 4567415) append the wording PACK and MOUNT to the ends of their marks, respectively, these additions do not obviate the similarities between the marks. Specifically, the applicant must disclaim the wording PACK for the reasons below because it merely refers to the applicant’s “Battery packs” (emphasis added) or merely describes a feature of the applicant’s goods, namely, they are containers or “compact unitized assembl[ies] to perform a specific function.” http://www.merriam-webster.com/dictionary/pack. Similarly, the registrant disclaimed the wording MOUNT because it merely refers to the registrant’s goods, namely, “wall mounts” (emphasis added). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); 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)); TMEP §1207.01(b)(viii), (c)(ii). Thus, this wording is less significant in terms of affecting the marks’ commercial impressions, and renders the wording KOALA the more dominant element of the marks.
Lastly, though the registrant (U.S. Registration No. 4567415) appends the wording TYPE to the end of its mark, this addition, too, does not obviate the similarities between the marks because the applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any significant wording that would distinguish it from that mark. Additionally, given that the wording TYPE is defined as “a particular kind, class, or group,” http://www.merriam-webster.com/dictionary/type, consumers are likely to perceive the registrant’s mark KOALATYPE as identifying a particular kind, class, or group of KOALA-branded goods.
Accordingly, the marks are confusingly similar.
Relatedness of the Goods
Here, the applicant's variety of batteries and chargers therefor is closely related to the registrants’ wall mounts for a variety of electronic devices (U.S. Registration No. 4567415) and variety of goods in Class 9 (U.S. Registration No. 4567415).
In this case, the registrant (U.S. Registration No. 4567415) uses broad wording to describe “Computer peripheral devices”, which presumably encompasses all goods of the type described, including applicant’s more narrow “Batteries; Battery chargers for laptop computers; Battery chargers for mobile phones; Battery chargers for tablet computers; Battery chargers for use with telephones; Battery packs; Renewable battery system to provide backup power”. See http://www.batterydepot.com/computers/computer-peripherals/yu-0010 (offering a battery under the general category of “Computer Peripherals”); http://www.bhphotovideo.com/c/product/1401417-REG/plantronics_89525_01_spare_usb_battery_charger.html (offering battery chargers under the general category of “Computer Peripherals”); see, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
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)).
Moreover, the attached evidence establishes that third parties routinely manufacture, market, and sell the goods identified in the application and registrations under the same mark. See, e.g., http://www.mophie.com/shop/usbc-devices/pro-cable-usb-a-usb-c and http://www.mophie.com/shop/cables-adapters/15w-usb-quick-charge-wall-charger (offering USB cables and battery chargers under M Mophie mark); http://www.dell.com/en-us/work/shop/accessories/apd/451-bbse?mkwid=s0pbwIJB4&pcrid=101952148149&pkw=&pmt=&pdv=c&slid=&product=451-BBSE&pgrid=28021835709&pgrid=28021835709&ptaid=pla-354070168936&ptaid=pla-354070168936&VEN1=s0pbwIJB4,101952148149,901q5c14135,c,,451-BBSE,28021835709,pla-354070168936&VEN1=s0pbwIJB4,101952148149,901q5c14135,c,,451-BBSE,28021835709,pla-354070168936&VEN2=,&VEN2=,&dgc=st&dgc=st&dgseg=bsd&dgseg=so&acd=12309152537501410&acd=12309152537501410&cid=298721&st=&gclid=EAIaIQobChMIpLyQ2tTG4QIVQkOGCh2zvATNEAQYAyABEgJAzPD_BwE&lid=5704670&VEN3=813004666012190942 and http://www.dell.com/en-us/shop/dell-multimedia-keyboard-kb216-us-international-qwerty-black/apd/580-admt/pc-accessories (offering batteries and computer keyboards for electronic devices under Dell mark); http://www.arkon.com/product/SM495-cell-phone-car-mount.html and http://www.arkon.com/product/TABRMAMPS-MET-tablet-wall-mount.html (offering battery chargers and wall mounts for tablets under Arkon mark); http://chargetech.com/product/mini-wall-mount-charging-station/ and http://chargetech.com/product/ps6-battery-packs/ (offering wall mounts for cellphones and batteries under ChargeTech mark). Thus, the trade channels are identical.
Accordingly, the goods are closely related.
Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Trademark Act Section 2(d).
Response to Refusal
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
POTENTIAL SECTION 2(d) REFUSAL ADVISORY – PRIOR-FILED APPLICATIONS
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 marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a subsequent refusal under Section 2(d) issues.
Although the applicant is not required to respond to the issue of the prior-filed applications, the applicant must respond to the above refusal and below requirement within six months of the mailing date of this Office action to avoid abandonment.
REQUIREMENT
If the applicant responds to the refusal, then the applicant also must respond to the below requirement.
DISCLAIMER REQUIRED
Applicant must provide a disclaimer of the unregistrable part 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 “PACK” because it is not inherently distinctive. This unregistrable term at best merely refers to or is merely descriptive of a feature of applicant’s goods. 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); TMEP §§1213, 1213.03(a).
Specifically, a pack is a “compact unitized assembly to perform a specific function.” http://www.merriam-webster.com/dictionary/pack. In light of this definition, the wording “PACK” in the applied-for mark merely refers to or merely describes a feature of the applicant’s goods, namely, they consist of compact unitized assemblies to perform a specific function. Additionally, not only does the applicant identify “[b]attery packs” (emphasis added) as goods that it intends to offer under its mark, but the attached evidence establishes that third parties routinely use the wording PACK to refer to or describe a feature of the same goods. See, e.g., http://www.swe.com/lithium-ion-custom-packs/ (“SWE manufactures Lithium-Ion battery packs optimized to your design specifications.”) (emphasis added); http://www.amazon.com/cell-phone-battery-packs-cases/b/ref=dp_bc_aui_C_3?ie=UTF8&node=2407758011 (offering “Battery Packs”); http://nksports.com/0106_1 (offering a “Battery Pack Charger”). Thus, this wording must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PACK” 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.
PRO SE APPLICANT ADVISORY
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For the refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For the 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.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
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 and requirement 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.
/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@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.