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: 6/13/2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Likelihood of Confusion Refusal
• Amendment to the Identification of the Services
• Amendment to the Description of the Mark
• Advisory – Foreign Attorney

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5340801, 5714186, 4798731, and 2725779.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant has applied for the design mark having the literal element “BLUE MOON” for services identified as “Retail building supply store services featuring wholesale and retail goods; Retail discount store services in the field of wholesale and retail goods; Retail markets featuring wholesale and retail goods; Retail on-line ordering services featuring wholesale and retail goods also accessible by telephone, facsimile and mail order; Retail store services featuring a wide variety of consumer goods of others; Retail store services featuring green and eco-friendly products in the nature of wholesale and retail goods; Retail store services featuring wholesale and retail goods; Retail store services featuring wholesale and retail goods provided via wireless communications; Retail store services in the field of wholesale and retail goods featuring a bonus incentive program for customers; Retail store services in the field of wholesale and retail goods featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases; Retail store services in the field of wholesale and retail goods that can be purchased under a rent-to-own contract; Retail store services, available through computer communications and interactive television, featuring wholesale and retail goods; Retail thrift stores featuring wholesale and retail goods; Computerized on-line retail store services in the field of wholesale and retail goods; Direct response retail services by means of infomercials in the field of wholesale and retail goods; Marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices; Mobile retail store services featuring wholesale and retail goods; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring wholesale and retail goods; Online retail wholesale and retail goods store services featuring in-store order pickup; Pop-up retail store services featuring wholesale and retail goods; Promoting and showcasing the goods of others in the field of wholesale and retail goods by means of an on-line shopping site with links to the retail advertisements of others; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Promoting the goods and services of others by providing a community-driven web site featuring user-submitted content in the nature of coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; Promoting the goods and services of others by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; Promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison information, product reviews, links to the retail websites of others, and discount information; Promoting the goods and services of others through infomercials played on customer point of purchase television monitors in retail stores” in International Class 35.

 

The registrants’ marks are as follows: 

 

Mark	Registration No.	Relevant Goods/Services
BLUE MOON BELL	5340801	“On-line wholesale and retail store services featuring eco-friendly goods for the home and garden, namely, pest control, pest deterrence and animal attractants and deterrents, none of the foregoing including bells; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes, all in the field of eco-friendly goods for pest control, pest deterrence and animal attractants and deterrents and none of the foregoing including bells”
BLUE MOON ESTATE SALES (design mark)	5714186	“Arranging, planning and conducting estate liquidation or tag sales for others”
BLUE MOON ESTATE SALES (design mark)	4798731	“Arranging, planning, and conducting tag sales, estate liquidation sales, yard sales or garage sales for others; The bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods and services from an Internet web site particularly specializing in the marketing of the sale of goods and services of others”
BLUE MOON TEA	2725779	“Retail store services featuring a line of teas”

 

All marks listed in bold in the table above are owned by the same registrant.

 

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.

 

SIMILARITY OF THE MARKS

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

With respect to applicant’s mark and Registration Nos. 5714186 and 4798731, 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 and/or services.  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, although applicant’s mark and the referenced registrations contain design elements, it is the literal elements thereof which is more dominant in creating the commercial impressions of the mark, namely, “BLUE MOON” and “BLUE MOON ESTATE SALES,” respectively.

 

Furthermore, with respect to Registration Nos. 5714186, 4798731, and 2725779, 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  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)); TMEP §1207.01(b)(viii), (c)(ii). In each of these marks, the wording “ESTATE SALES” and “TEA” have been disclaimed as it is merely descriptive of the relevant registrants’ services. In that regard, this descriptive matter is less significant in creating the commercial impression of the marks, thus rendering the wording “BLUE MOON” to be the dominant element of these marks.

 

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

 

In the present case, the dominant elements of the parties’ marks is the identical wording “BLUE MOON.” Therefore, the dominant element of these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Furthermore, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of 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 wording that would distinguish it from that mark. Specifically, the literal element of applicant’s mark “BLUE MOON” is wholly encompassed by the literal elements of the cited registrations, namely, “BLUE MOON BELL,” “BLUE MOON ESTATE SALES,” and “BLUE MOON TEA.” Accordingly, with respect to the literal elements of the marks, applicant’s mark merely deletes terms from the cited registrations without including any wording which would distinguish the marks.

 

Therefore, as both applicant’s and registrants’ marks are substantially similar in sound, appearance, meaning, and overall commercial impression, the marks are considered similar for likelihood of confusion purposes.

 

RELATEDNESS OF THE SERVICES

 

In addition to the marks being substantially similar, the services in this comparison are also related, if not identical.

 

The goods and/or 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/or 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).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “Retail on-line ordering services featuring wholesale and retail goods also accessible by telephone, facsimile and mail order; Retail store services featuring a wide variety of consumer goods of others; Retail store services featuring green and eco-friendly products in the nature of wholesale and retail goods; Retail store services featuring wholesale and retail goods; Retail store services featuring wholesale and retail goods provided via wireless communications; Retail store services in the field of wholesale and retail goods featuring a bonus incentive program for customers; Retail store services in the field of wholesale and retail goods featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases; Retail store services in the field of wholesale and retail goods that can be purchased under a rent-to-own contract; Retail store services, available through computer communications and interactive television, featuring wholesale and retail goods; Retail thrift stores featuring wholesale and retail goods; Computerized on-line retail store services in the field of wholesale and retail goods; […]  Online retail wholesale and retail goods store services featuring in-store order pickup; Pop-up retail store services featuring wholesale and retail goods;”, which presumably encompasses all goods and/or services of the type described, including registrants’ more narrow “On-line wholesale and retail store services featuring eco-friendly goods for the home and garden, namely, pest control, pest deterrence and animal attractants and deterrents, none of the foregoing including bells; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes, all in the field of eco-friendly goods for pest control, pest deterrence and animal attractants and deterrents and none of the foregoing including bells” for Reg. No. 5340801, “The bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods and services from an Internet web site particularly specializing in the marketing of the sale of goods and services of others” for Reg. No. 4798731, “Retail store services featuring a line of teas” for Registration No. 78008569.  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 services 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)). Thus, as applicant’s services are broadly worded to effectively cover any type of good, either wholesale or retail,, the more narrowly worded services for the cited registrations such as tea and eco-friendly products are encompassed by applicant’s services and are legally identical.

 

Additionally, the goods and/or services 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)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

Furthermore, the attached Internet evidence, consisting of webpages from www.christies.com, www.weschlers.com, www.thrivemarket.com, www.amazon.com, and www.ebay.com, establishes that the same entity commonly provides the relevant services and markets the services under the same mark.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Thus, the attached internet evidence demonstrates that a variety of retail store services, services pertaining to the bringing together of the goods of others, and estate and tag sales commonly emanate from the same source such that use of similar marks in connection therewith, as in the present case, creates a likelihood of confusion.

 

Thus, the applicant’s retail and promotional services and registrants’ retail, estate, purchasing services are related.

 

For these reasons, consumers are likely to encounter the parties’ services in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related services provided under the marks. Accordingly, registration is refused under Trademark Act Section 2(d).

 

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

 

AMENDMENT TO THE IDENTIFICATION OF SERVICES – PARTIAL

 

The following applies to only the entries identified below.

 

As further explained below, the wording used to describe many of the applied-for goods needs clarification because it is indefinite, overbroad, or contains vague wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, where indicated below, the use of the wording “wholesale and retail goods” in the identification of services is indefinite and must be clarified because it does not clearly indicate the nature or field of the goods that are the subject of applicant’s retail and promotional services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  To that point, applicant must further specify the type of goods for which such services are being provided.

 

Furthermore, the use of the term “wholesale” to describe goods featured through retail services is incongruous as such services would be limited to featuring particular retail goods. Therefore, in these situations, the term “wholesale” must be deleted as outlined below.

 

Full Suggested Identifications

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.

 

Applicant may substitute the following wording if acceptable and accurate:

 

In Class 35:

 

“Retail building supply store services featuring wholesale and retail goods in the nature of{indicate type of goods, e.g., cabinets, sinks and faucets for kitchens and bathrooms}; Retail discount store services in the field of wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Retail markets featuring wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Retail on-line ordering services featuring wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods} also accessible by telephone, facsimile and mail order; Retail store services featuring a wide variety of consumer goods of others; Retail store services featuring green and eco-friendly products in the nature of wholesale and retail goods in the nature of {indicate type of ecofriendly goods sold, e.g., ecofriendly household cleaners and pest control}; Retail store services featuring wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Retail store services featuring wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods} provided via wireless communications; Retail store services in the field of wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods} featuring a bonus incentive program for customers; Retail store services in the field of wholesale and retail goods in the nature of {indicate type of goods sold, e.g., wide variety of consumer goods of others} featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases; Retail store services in the field of wholesale and retail goods in the nature of {indicate type of goods sold, e.g., furniture} that can be purchased under a rent-to-own contract; Retail store services, available through computer communications and interactive television, featuring wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Retail thrift stores featuring wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Computerized on-line retail store services in the field of wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Direct response retail services by means of infomercials in the field of wholesale and retail goods in the nature of {indicate type of goods sold, e.g., household goods}; Marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices; Mobile retail store services featuring wholesale and retail goods in the nature of {indicate field or type of goods/services, e.g., mobile applications}; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring wholesale and retail goods in the nature of {indicate field or type of goods, e.g., clothing}; Online retail wholesale and retail goods {indicate field or type of goods, e.g., department, drug, grocery, book, etc.} store services featuring in-store order pickup; Pop-up retail store services featuring wholesale and retail goods in the nature of {indicate field of goods, e.g., clothing, furniture, household goods, wide variety of consumer goods of others, etc.}; Promoting and showcasing the goods of others in the field of wholesale and retail goods in the nature of {specify the field or goods, e.g., skincare} by means of an on-line shopping site with links to the retail advertisements of others; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Promoting the goods and services of others by providing a community-driven web site featuring user-submitted content in the nature of coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; Promoting the goods and services of others by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; Promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison information, product reviews, links to the retail websites of others, and discount information; (delete duplicate entry) Promoting the goods and services of others through infomercials played on customer point of purchase television monitors in retail stores”

 

Scope Advisory and Identification of Manual Reference

 

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.

 

MARK DESCRIPTION

 

Applicant must provide an amended description of the mark that includes all the literal and design elements and colors shown in the mark.  Specifically, the following colors have been omitted:  light blue, white, and gray.

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. 

 

The following description is suggested, if accurate:

 

The mark consists of a black background. At the bottom of which, the words 'Blue Moon' appear in a white stylized text. Above the text, there is a light blue round moon having a light blue glow and to the bottom left of which appears white and grey clouds.

 

ADVISORY – FOREIGN ATTORNEY

 

The application indicates that a foreign attorney represents applicant and/or is the correspondent.  When responding to this Office action, be advised that the only attorneys who may sign responses and otherwise represent applicant before the USPTO are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602. 

 

Unless the identified foreign attorney can establish that he or she is authorized under 37 C.F.R. §11.14, this attorney is not authorized to practice before the USPTO in trademark matters.  See 37 C.F.R. §2.62(b); TMEP §602.03(e).  Any power of attorney to this foreign attorney is void ab initio.  TMEP §602.03(e). 

 

COMMUNICATIONS WITH THE TRADEMARK OFFICE

 

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. 

 

U.S. COUNSEL RULES CHANGE ADVISORY

 

In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

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.  

 

 

 

Lauren Roncoroni

/Lauren Roncoroni/

Trademark Examining Attorney

Law Office 109

Phone: (571) 270-5661

Lauren.Roncoroni@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 6/13/2019 FOR U.S. APPLICATION SERIAL NO. 88357853

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/13/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

Lauren Roncoroni

/Lauren Roncoroni/

Trademark Examining Attorney

Law Office 109

Phone: (571) 270-5661

Lauren.Roncoroni@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.