To: | Office Holdings Limited (mkeipdocket@michaelbest.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88389888 - OFFICE - 209117-9016 |
Sent: | 6/26/2019 1:04:55 PM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88389888
MARK: OFFICE
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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: Office Holdings Limited
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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: 6/26/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, applicant’s mark is OFFICE for “Headphones; cases for mobile phones and personal media devices; sunglasses; Accessories for mobile phones and personal media devices; covers, holders, carriers and straps for mobile phones and personal media devices; spectacles” in International Class 9, and “Luggage; purses; wallets; umbrellas; Cases; holders; pouches; carriers; bags; handbags; parasols” in International Class 18.
The registrants’ marks are OFFICE PAL for “Eyeglasses; Antireflection coated eyeglasses; Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor; Frames for eyeglasses and pince-nez; Magnifying glasses that fit on the user's face in the manner of eyeglasses; Protective eyeglasses; Reading eyeglasses; Spectacles” in International Class 9, OFFICE WARRIOR for “Belt and hip bags for storage of office supplies and equipment; fabric pouches sold empty that may be used to hold office supplies and equipment” in International Class 18, and OFFICE ON WHEELS for “Luggage” in International Class 18.
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.
1. 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).
In the present case, applicant’s mark, “OFFICE”, is incorporated in its entirety within the registered marks “OFFICE PAL”, “OFFICE WARRIOR”, and “OFFICE ON WHEELS”.
In this case, not only is applicant’s mark, “OFFICE”, incorporated within each of the registered marks, but it is also the first word in each of the registered marks. Thus, it is the dominant word in those marks.
Accordingly, the marks are confusingly similar.
2. Relatedness of the Goods
In this case, the goods in the application and registrations for “OFFICE PAL” and “OFFICE ON WHEELS” are nearly identical. Both applicant and the registrant for “OFFICE PAL” offer spectacles and sunglasses. The registrant also offers eyeglasses, which is another term for spectacles. Additionally, both applicant and the registrant for “OFFICE ON WHEELS” offer “luggage”. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Furthermore, the application uses broad wording to describe “pouches”, which presumably encompasses all goods of the type described, including the registered mark “OFFICE WARRIOR”’s narrower “fabric pouches sold empty that may be used to hold office supplies and equipment.” 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). The registrant merely specifies the type of pouches being offered. Thus, applicant’s and the 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)). Thus, applicant’s and the registrant’s goods are related.
Based on the analysis above, the applicant’s and the registrants’ goods are related.
3. Conclusion
Because applicant’s the registrants’ marks are similar and the goods are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
SECTION 2(D) ADVISORY – PRIOR-FILED 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.
IDENTIFICATION REQUIREMENT
Applicant has identified the following goods and/or services:
International Class 9: “Headphones; cases for mobile phones and personal media devices; sunglasses; Accessories for mobile phones and personal media devices; covers, holders, carriers and straps for mobile phones and personal media devices; spectacles”
International Class 18: “Luggage; purses; wallets; umbrellas; Cases; holders; pouches; carriers; bags; handbags; parasols”
The wording “personal media devices” in the identification of goods is indefinite and must be clarified because applicant must specify the type of personal media devices being offered, such as personal media drives. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Similarly, the wording “accessories” is indefinite and must be clarified because applicant must specify the types of accessories being offered, such as headphones. In International Class 18, the wording “cases; holders; pouches; carriers; bags” is indefinite and must be clarified because applicant must specify the types of cases, holders, pouches, carriers, and bags being offered, such as travel cases, credit card holders, wearable strap-on pouches, suit carriers, and drawstring bags.
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language in bold for clarity:
International Class 9: “Headphones; cases for mobile phones and personal media devices, namely, {specify type of personal media device, i.e. personal media drive}; sunglasses; Accessories for mobile phones and {specify type of personal media device}, namely, {specify type of accessories, i.e. headphones}; covers, holders, carrying case and straps for mobile phones and {specify type of personal media device}; spectacles”
International Class 18: “Luggage; purses; wallets; umbrellas; travel cases; credit card holders; wearable strap-on pouches; suit carriers; drawstring bags; handbags; parasols”
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.
SCOPE OF FOREIGN REGISTRATION REQUIREMENT
In this case, the U.S. application identifies the particular goods as follows:
International Class 9: “Headphones; cases for mobile phones and personal media devices; sunglasses; accessories for mobile phones and personal media devices; covers, holders, carriers and straps for mobile phones and personal media devices; spectacles”
International Class 18: “Luggage; purses; wallets; umbrellas; Cases; holders; pouches; carriers; bags; handbags; parasols”
However, the foreign registration identifies the following goods:
International Class 9: “Headphones; cases for mobile phones and personal media devices; sunglasses”
International Class 18: “Luggage; purses and wallets; umbrellas”
These goods in the U.S. application exceed the scope of goods in the foreign registration because the foreign application does not include “accessories for mobile phones and personal media devices; covers, holders, carriers and straps for mobile phones and personal media devices; spectacles, in International Class 9, and “Cases; holders; pouches; carriers; bags; handbags; parasols” in International Class 18. Thus, these goods in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application for the Section 44(e) filing basis to correspond with the goods identified in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
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.
Mischler, Megan
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@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.