To: | ZAP Mosquito Solutions Inc. (tmdocketny@kenyon.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88385482 - BASK - 121621/2 |
Sent: | 7/1/2019 10:36:56 AM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88385482
MARK: BASK
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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: ZAP Mosquito Solutions Inc.
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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: 7/1/2019
SUMMARY OF ISSUES:
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Comparison of Marks
Applicant seeks to register BASK (standard characters), while the registrant owns and uses the mark BASK (standard characters).
In the present case, applicant’s mark is BASK and the registrant’s mark is BASK. 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 the registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Comparison of Goods
In addition, where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Here, both the marks and the goods are extremely related.
Applicant seeks to register its mark for, inter alia, “compact and transportable devices; self-healing lights,” while the registrant uses its mark on “light therapy lamps; sensory light therapy unit.”
The goods are closely related or identical in that applicant’s compact and transportable devices could be light therapy lamps and units and the self-healing lights appear to be identical in nature to the registrant’s light therapy lamps and units.
In sum, since the marks are identical and the goods at least related and complementary, there is a substantial likelihood that purchasers would be confused as to the sources of the goods. As such, the mark is refused under Section 2(d) of the Trademark Act.
OPPORTUNITY TO RESPOND
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
If applicant chooses to respond to the refusal to register, applicant must also respond to the following requirement(s).
REQUIREMENT(S)
IDENTIFICATION OF GOODS UNACCEPTABLE
Applicant must specify the common commercial or generic name for the goods and/or services. See TMEP §1402.01. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses and/or describe the nature of the services as well as their main purpose, channels or trade, and the intended consumer(s). See id.
Applicant may adopt the following wording, if accurate:
Class 005 (acceptable as applied for):
Larvae exterminating preparations and insect exterminating agents.
Class 009:
The wording “Marine safety products, namely, monitoring and detection systems, retracting cleats” is indefinite and must be further clarified in order to be acceptable. In addition, the individual components of the system must be listed and classified according to the primary component of the system.
Class 010 (add):
(moved from Class 011) Self-healing lights, namely, light therapy lamps.
Class 011:
Outdoor automated mist system for insect and pest control comprising _____ (indicate major components of the system using their
common commercial or generic name); do-it-yourself pest control systems comprising _____ (indicate major components of the system using their common commercial or generic
name); compact and transportable devices, namely, _____ (specify devices using their common commercial or generic name and classify accordingly); larvicide dispensing systems
for outdoor standing water comprising _____ (indicate major components of the system using their common commercial or generic name); insect repelling lighting systems comprising _____ (indicate major components of the system using their common commercial or generic name) for attics, garages and outdoor areas; marine dock lighting system comprising _____ (indicate major components of the system using their common commercial or generic name); self healing lights.
Again, 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.
POTENTIAL ADDITION OF A CLASS – INTENT TO USE
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least four (4) classes; however, applicant submitted a fee(s) sufficient for only three (3) class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Tricia Sonneborn/
Tricia Sonneborn
Trademark Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
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.