To: | INNOTECH APPLIANCE LIMITED (admin1@beijingfutian.com) |
Subject: | U.S. Trademark Application Serial No. 88393035 - FLEXFORCE - N/A |
Sent: | July 05, 2019 09:36:55 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88393035
Mark: FLEXFORCE
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Correspondence Address: C/O WEI LI PO BOX521476,FLUSHING,NY, C/O C/O WEI LI PO BOX521476,FLUSHING,NY, C/O
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Applicant: INNOTECH APPLIANCE LIMITED
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: July 05, 2019
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:
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. 5662758. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s applied-for mark is FLEXFORCE in stylized font for “Electric toothbrush replacement heads; Floss for dental purposes; Tooth brush cases; Tooth brushes; Toothbrushes, electric; Toothpick holders; Toothpicks; Water apparatus for cleaning teeth and gums for home use” in International Class 21. Applicant is listed as a limited liability company organized under the laws of Hong Kong.
The examining attorney submits that there is a likelihood of confusion with the registered mark FLEXFORCE in standard characters for “Breath freshening sprays; Cosmetic preparations for the care of mouth and teeth; Dental bleaching gel; Dentifrices; Dentifrices in the form of chewing gum; Denture cleaners; Denture polishes; Non-medicated mouth washes; Tooth whitening pastes” in International Class 3 and “Electric toothbrush replacement heads; Floss for dental purposes; Toothbrush holders; Toothbrushes; Toothbrushes, electric; Toothpick holders; Toothpicks; Water apparatus for cleaning teeth and gums for home use” in International Class 21. Registrant is listed as a limited company organized under the laws of China.
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. 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.
a. Comparison of the Marks
In the present case, applicant’s mark is FLEXFORCE in stylized font and registrant’s mark is FLEXFORCE in standard characters. The wording in the marks is 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 the wording is 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. Id.
While applicant’s mark appears in stylized font, this stylization does not change the commercial impression of the wording or overcome the similarities between the marks. Further, registrant’s mark appears in standard characters. A mark in typed or standard characters 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”).
Therefore, the marks are confusingly similar.
b. Comparison of the Goods
Registrant identified “Breath freshening sprays; Cosmetic preparations for the care of mouth and teeth; Dental bleaching gel; Dentifrices; Dentifrices in the form of chewing gum; Denture cleaners; Denture polishes; Non-medicated mouth washes; Tooth whitening pastes” in International Class 3 and “Electric toothbrush replacement heads; Floss for dental purposes; Toothbrush holders; Toothbrushes; Toothbrushes, electric; Toothpick holders; Toothpicks; Water apparatus for cleaning teeth and gums for home use” in International Class 21.
In this case, the goods in the application and registration are identical in part, specifically they both identified electric toothbrush replacement heads, floss for dental purposes, toothbrushes, toothbrushes, electric, toothpick holders, toothpicks, water apparatus for cleaning teeth and gums for home use. 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)). Thus, applicant’s and registrant’s goods are related.
c. Conclusion
Applicant’s and registrant’s marks are confusingly similar. Further, the goods of applicant and registrant are considered closely related. Therefore, registration of the applied-for mark is refused under Trademark Act Section 2(d).
ADVISORY: CLAIM OF OWNERSHIP OF REGISTRATION
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. {specify Registration Number, e.g., 5662758}.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
PLEASE NOTE: If applicant claims ownership of the cited registration, applicant may lose its TEAS Plus status and be required to pay an additional fee. If applicant failed to claim ownership under 37 C.F.R. §2.36 of applicant’s prior registration(s) for the same mark, in which the owner differs from that in the application then applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04. The additional fee is required even if applicant later corrects these application requirements.
AMENDMENT TO THE DESCRIPTION OF THE MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of the stylized word “FLEXFORCE”.
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.
ASSISTANCE
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.
How to respond. Click to file a response to this nonfinal Office action
/Danythe Johnson/
Examining Attorney
Law Office 120
571-272-4391
danythe.johnson@uspto.gov
RESPONSE GUIDANCE