Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  May 05, 2020

 

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.

 

SUMMARY OF ISSUES:

• Advisory: Prior-Filed Application
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods
• U.S. Counsel Required

 

ADVISORY: PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88376909 (ICEZONE) precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant may elect not to respond to the prior-filed application advisory but must respond the below refusals and requirements to avoid abandonment.

 

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. 5080984 (ICYZONE).  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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Comparison of the Marks

 

The applied-for mark is “ICEZONE” in standard characters.

 

The registered mark is “ICYZONE” with a design.

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Further, a mark in typed or standard characters, like the applied-for mark, 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”).

 

Based on the above, the marks are confusingly similar.

 

Comparison of the Goods

 

Applicant identifies the following goods:

 

IC 009:            Visual training aid, namely, non-prescription glasses used for visual training purposes

 

IC021:             Drinking glasses made from recycled Watch glasses; Drinking glasses made from recycled Optical glasses; Drinking glasses made from recycled Theatre glasses; Drinking glasses made from recycled Sports glasses; Drinking glasses made from recycled Ski glasses; Drinking glasses made from recycled Protective glasses; Drinking glasses made from recycled Corrective glasses; Drinking glasses made from recycled Lamp glasses; Drinking glasses made from recycled Cupping glasses; Drinking glasses made from recycled Cheval glasses; Drinking glasses made from recycled Preserve glasses; Drinking glasses made from recycled Drinking glasses; Drinking glasses made from recycled Wine glasses; Drinking glasses made from recycled Parfait glasses; Drinking glasses made from recycled Margarita glasses; Drinking glasses made from recycled Cocktail glasses; Drinking glasses made from recycled Martini glasses; Drinking glasses made from recycled Cyclists' glasses; Drinking glasses made from recycled Eye glasses; Drinking glasses made from recycled Sun glasses; Drinking glasses made from recycled Reading glasses; Drinking glasses made from recycled Opera glasses; Drinking glasses made from recycled Magnifying glasses; Drinking glasses made from recycled Sports' glasses; Drinking glasses made from recycled Shot glasses; Drinking glasses made from recycled Whisky glasses; Drinking glasses made from recycled Looking glasses; Drinking glasses made from recycled Field-glasses; Drinking glasses made from recycled Beer glasses; Drinking glasses made from recycled Children's eye glasses; Drinking glasses made from recycled Drinking glasses, namely, tumblers; Drinking glasses made from recycled Pilsner drinking glasses; Drinking glasses made from recycled Glasses for sports; Drinking glasses made from recycled Toy prism glasses; Drinking glasses made from recycled Anti-glare glasses; Drinking glasses made from recycled Virtual reality glasses; Drinking glasses made from recycled Cases for children's eye glasses; Drinking glasses made from recycled Frames for glasses and pince-nez; Drinking glasses made from recycled Tumblers for use as drinking glasses; Drinking glasses made from recycled Plastic cubes used as spacers between stackable glasses; Drinking glasses made from recycled Reading light apparatus that attaches to a pair of reading glasses; Drinking glasses made from recycled Spun glass; Drinking glasses made from recycled Speckled glass; Drinking glasses made from recycled Building glass

 

Registrant identifies the following goods in Class 025: Children's and infants' cloth bibs; Coats; Corsets; Dresses; Shirts; Shoes; Sports singlets; Suits; Sweaters; Tights; Trousers; Underwear; Jackets; Leather coats; T-shirts.

 

The goods 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 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 screenshots from third-party websites, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark and/or that the relevant goods 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 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). For example, applicant will note the following:

·       http://www.katespade.com/accessories/sunglasses-reading-glasses/

·       http://www.katespade.com/

·       http://www.katespade.com/home/dining/drinkware/cups-mugs/

·       http://factory.jcrew.com/c/womens-clothing/sunglasses/bluelightglasses

·       http://www.freepeople.com/shop/the-art-of-snore-blue-light-glasses/?color=013&countryCode=US&gclid=EAIaIQobChMIvpiwkfmc6QIVh6_ICh3A6APtEAYYBiABEgLSjfD_BwE&gclsrc=aw.ds&inventoryCountry=US&size=One%20Size&type=REGULAR&quantity=1

·       http://www.anthropologie.com/kitchen-glassware?brand=Gather%20by%20Anthropologie

·       http://www.anthropologie.com/eyewear

·       http://www.anthropologie.com/shop-all-clothing?brand=Anthropologie

 

Summary – Likelihood of Confusion

 

In light of the similarities between the marks and the relatedness of the goods, it is likely that consumers who encounter the parties’ goods will falsely conclude that they originate from the same source.

 

Based on the foregoing, 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 requirements set forth below.

 

IDENTIFICATION OF GOODS

 

The wording “Drinking glasses made from recycled Virtual reality glasses; Drinking glasses made from recycled Cases for children's eye glasses; Drinking glasses made from recycled Frames for glasses and pince-nez; Drinking glasses made from recycled Plastic cubes used as spacers between stackable glasses; Drinking glasses made from recycled Reading light apparatus that attaches to a pair of reading glasses” in the identification of goods is indefinite and must be clarified because the identification must specify the type of recycled glass or glass goods that the drinking glasses are made from and the following do not identify either glass materials or materials that one would not make drinking glasses from “recycled Virtual reality glasses;” “recycled Cases for children's eye glasses;” “recycled Frames for glasses and pince-nez;” “recycled Plastic cubes used as spacers between stackable glasses;” or recycled Reading light apparatus that attaches to a pair of reading glasses”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

IC 009:            Visual training aid, namely, non-prescription glasses used for visual training purposes

 

IC021:             Drinking glasses made from recycled Watch glasses; Drinking glasses made from recycled Optical glasses; Drinking glasses made from recycled Theatre glasses; Drinking glasses made from recycled Sports glasses; Drinking glasses made from recycled Ski glasses; Drinking glasses made from recycled Protective glasses; Drinking glasses made from recycled Corrective glasses; Drinking glasses made from recycled Lamp glasses; Drinking glasses made from recycled Cupping glasses; Drinking glasses made from recycled Cheval glasses; Drinking glasses made from recycled Preserve glasses; Drinking glasses made from recycled Drinking glasses; Drinking glasses made from recycled Wine glasses; Drinking glasses made from recycled Parfait glasses; Drinking glasses made from recycled Margarita glasses; Drinking glasses made from recycled Cocktail glasses; Drinking glasses made from recycled Martini glasses; Drinking glasses made from recycled Cyclists' glasses; Drinking glasses made from recycled Eye glasses; Drinking glasses made from recycled Sun glasses; Drinking glasses made from recycled Reading glasses; Drinking glasses made from recycled Opera glasses; Drinking glasses made from recycled Magnifying glasses; Drinking glasses made from recycled Sports' glasses; Drinking glasses made from recycled Shot glasses; Drinking glasses made from recycled Whisky glasses; Drinking glasses made from recycled Looking glasses; Drinking glasses made from recycled Field-glasses; Drinking glasses made from recycled Beer glasses; Drinking glasses made from recycled Children's eye glasses; Drinking glasses made from recycled Drinking glasses, namely, tumblers; Drinking glasses made from recycled Pilsner drinking glasses; Drinking glasses made from recycled Glasses for sports; Drinking glasses made from recycled Toy prism glasses; Drinking glasses made from recycled Anti-glare glasses; {delete goods that do not identify a type of recycled glass material used to make drinking glasses: “Drinking glasses made from recycled Virtual reality glasses; Drinking glasses made from recycled Cases for children's eye glasses; Drinking glasses made from recycled Frames for glasses and pince-nez;”} Drinking glasses made from recycled Tumblers for use as drinking glasses; {delete goods that do not identify a type of recycled glass material used to make drinking glasses: Drinking glasses made from recycled Plastic cubes used as spacers between stackable glasses; Drinking glasses made from recycled Reading light apparatus that attaches to a pair of reading glasses;} Drinking glasses made from recycled Spun glass; Drinking glasses made from recycled Speckled glass; Drinking glasses made from recycled Building glass

 

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.

 

U.S. COUNSEL REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information. 

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Sarah E. Kunkleman/

Sarah E. Kunkleman

Trademark Examining Attorney

Law Office 105

571-272-6151

sarah.kunkleman@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 05, 2020 for

U.S. Trademark Application Serial No. 88388838

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Sarah E. Kunkleman/

Sarah E. Kunkleman

Trademark Examining Attorney

Law Office 105

571-272-6151

sarah.kunkleman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 05, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”