UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88381957
MARK: CUBIC
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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: Haiqi Hu
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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: 6/22/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is CUBIC for “Blouses; Clothing, namely, base layers; Clothing, namely, crops; Clothing, namely, knee warmers; Clothing, namely, wrap-arounds; Coats; Dresses; Hoods; Jackets; Jeans; Jerseys; Overcoats; Pants; Shawls; Shawls and headscarves; Shawls and stoles; Shirts; Shorts; Skirt suits; Skirts; Skirts and dresses; Sweaters; Vests; Athletic skirts; Belts for clothing; Evening dresses; Gloves as clothing; Headbands for clothing; Knit skirts; Leather skirts; Leather belts; Pleated skirts; Short sets; Shoulder wraps; Tube skirts; Woven skirts,” and the registrant’s mark is CUBIK for On-line retail store services featuring custom-designed consumer merchandise, apparel and corporate gifts and Customized imprinting of company names and logos on the goods of others, namely, on promotional merchandise, apparel and corporate gifts.
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
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 CUBIC is confusingly similar to the registrant's standard character mark(s) CUBIK as discussed further below.
In the present case, applicant’s mark and registrant’s mark(s) contain the nearly identical wording CUBIC and CUBIK which is nearly identical in appearance, and identical in sound, and overall commercial impression.
For these reasons, when consumers encounter the parties' goods and/or services using marks with these similarities, they are likely to be confused as to the source of the goods and/or services. Therefore, the marks are confusingly similar.
Relatedness of the Goods and/or Services
Here, the applicant's goods is/are closely related to the registrant's services as discussed further below.
Specifically, the attached evidence shows that third parties routinely offer the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels. See e.g.
http://www.kennethcole.com/women/clothing/, http://www.kennethcole.com/men/accessories/hats%2C-gloves-and-scarves/, and http://www.kennethcole.com/men/clothing/t-shirts-and-polos/ (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels); http://www.thingsremembered.com/personalized-baby-clothes/category/baby-kids-apparel and http://www.thingsremembered.com/personalized-business-gifts (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels); http://us.louisvuitton.com/eng-us/women/ready-to-wear/knitwear/_/N-7zkbqm, http://us.louisvuitton.com/eng-us/women/ready-to-wear/tops/_/N-wjj8no, http://us.louisvuitton.com/eng-us/women/gifts/personalization/_/N-1id8c8h/to-2, and http://us.louisvuitton.com/eng-us/men/gifts/personalization/_/N-197m1bx/to-2 (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels); and http://pinklily.com/monogrammed/, http://pinklily.com/hats and http://pinklily.com/clothing/ (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels); and http://www.zazzle.com/custom/clothing and http://www.zazzle.com/c/kids+clothing?pg=2, (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels). The attached Internet evidence, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark and/or the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
Consequently, upon encountering applicant’s mark used in connection with applicant’s goods/services, and registrant’s mark used in connection with registrant’s goods/services, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
Because the marks are confusingly similar and the goods and/or services are closely related, consumers are likely to be confused as to the source of the goods and/or services. 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.
REQUIREMENT
If the applicant responds to the refusal, then the applicant also must respond to the below requirement.
SUBSTITUTE SPECIMEN REQUIRED
Specimen is Unacceptable Internal Business Document
Specifically, the specimen consists of a packing list, invoice, and trade show summary.
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. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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).
Applicant may respond to this refusal 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 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 both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE GUIDELINES
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.
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.
/Karen S. Derby/
Karen S. Derby
Examining Attorney
U.S. Patent and Trademark Office
Law Office 123
Karen.Derby@uspto.gov
571.270.7070
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.