| To: | TUL CORPORATION (mailroom@mg-ip.com) |
| Subject: | U.S. Trademark Application Serial No. 88424731 - RED DEVIL - 2846/1671TUS |
| Sent: | January 08, 2020 10:16:50 AM |
| Sent As: | ecom125@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88424731
Mark: RED DEVIL
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Correspondence Address: |
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Applicant: TUL CORPORATION
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Reference/Docket No. 2846/1671TUS
Correspondence Email Address: |
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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: January 08, 2020
This Office action is supplemental to and supersedes the previous Office action issued on 08/02/2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Failure to Function Refusal for International Class 35. See TMEP §§706, 711.02.
In a previous Office action dated 08/02/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, failure to show the applied-for mark in use in commerce with any of the specified services in International Class 35. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and/or services, clarify the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: mark description clarified. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Partial Failure to Function Refusal: Activity not a Service
• MAINTAINED: Section 2(d) Refusal—Likelihood of Confusion
• MAINTAINED: Partial Specimen Refusal for International Class 35
• MAINTAINED: Identification of Services
Applicant must respond to all issues raised in this Office action and the previous 08/02/2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
PARTIAL SECTIONS 1, 2, and 45 REFUSAL—ACTIVITY NOT A SERVICE: THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:
(1) A service is a real activity, not an idea, concept, process, or system.
(2) A service is performed primarily for the benefit of someone other than the applicant.
(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.
TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).
In this case, the description set forth in the identification of services, to which this refusal applies, is as follows: “business management assistance; commercial and industrial management assistance; commercial administration of the licensing of the goods and services of others; import-export agency services; commercial information agency services; dissemination of advertising matter; updating of advertising material; advertising and publicity services; advertising agency services ; publicity agency services; compiling indexes of information for commercial or advertising purposes; design of advertising materials; compiling indexes of information online for commercial or advertising purposes; on-line advertising on a computer network; organization of trade fairs for commercial or advertising purposes; television advertising; marketing services; providing business information via a web site.” The specimen indicates that these activities are not registrable services because the advertising materials seem to relate to applicant’s goods in Class 9, the applicant does not appear to be providing marketing and advertising services for others.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is continued and maintained with respect to U.S. Registration Nos. 5010657 and 5714661 in International Classes 9 and 35. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Applicant’s mark “RED DEVIL” in stylized lettering is for “Computers; computer hardware; computer software, recorded, for data processing and memory devices, namely, computer software for image, graphics, text; processing, data storage and accelerating computer functions; data processing apparatus; computer memory devices; Computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; computer programs, recorded, for data processing and memory devices, namely, computer programs for processing, data storage and accelerating computer functions for use with video and computer games; computer peripheral devices; Downloadable computer programs, for data processing and memory devices, namely, downloadable computer programs for processing, data storage and accelerating computer functions for use with video and computer games; Downloadable computer software applications for data processing and memory devices, namely, downloadable computer software for processing, data storage and input/output accelerating for use with video and computer games; acoustic couplers; couplers for electronics; Computer central processing units; Optical character readers; interfaces for computers; integrated circuit cards; blank smart cards; memory cards for video game machines; graphics card; Electronic chips for the manufacture of integrated circuits; integrated circuits” in International Class 9, and for “business management assistance; commercial or industrial management assistance; commercial administration of the licensing of the goods and services of others; import-export agency services; commercial information agency services; dissemination of advertising matter; updating of advertising material; advertising / publicity; advertising agency services /publicity agency services; compiling indexes of information for commercial or advertising purposes; design of advertising materials; web indexing for commercial or advertising purposes; on-line advertising on a computer network; organization of trade fairs for commercial or advertising purposes; television advertising; presentation of goods on communication media, for retail purposes; marketing; providing business information via a web site; online retail services for computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card; retail and wholesale services for computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card” in International Class 35.
Registrant’s mark for Reg. No. 5010657, “DEVIL” is for “Computer hardware; Computers; Computers and computer hardware; Supercomputers” in International Class 9.
Registrant’s mark for Reg. No. 5714661, “RED DEVIL” is for “Toy robots; Controllers for game consoles; Gyroscopes and flight stabilizers for model aircraft; Remote-controlled toy vehicles; Toy building blocks; Toy drones” in International Class 28.
Standard of Analysis for 2(d) Refusal
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In this case, applicant’s mark is composed of stylized lettering and a slight design of the letter “V”. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In regards to Reg. No. 5714661, applicant’s mark and registrant’s mark share identical wording. As mentioned above, the fact that the designs are different does not obviate likelihood of confusion since the word portion of the marks are considered the dominant portions. The designs also both evoke pictorial representations of the word “devil” and thus are not so distinct from each other. These marks are also identical in 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 word portions are identical, and the designs are so similar, 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 and/or services. Id. Therefore, the marks are confusingly similar.
Further, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant's goods and services sold under the “RED DEVIL” mark constitute a new or additional product line from the same source as the goods sold under the registered “RED DEVIL” mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).”
In regards to the additional wording in applicant’s mark when compared to Reg. No. 5010657, in this case, “RED”, adding a term to a registered mark generally does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, these marks are identical in part.
Furthermore, 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).
Applicant argues that the additional word “RED” substantially differentiates applicant’s mark from Reg. No. 5010657. For the reasons discussed above, the examining attorney disagrees. Registrant’s mark is entirely incorporated within applicant’s mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). As mentioned before, the marks are identical in part and the goods are virtually identical.
Accordingly, in this case, the mark “RED DEVIL” offers the same commercial impression as the registered “DEVIL” and “RED DEVIL” marks. For this reason, the marks are confusingly similar.
Similarity of the Goods and Services
The goods and services 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).
In this case, the goods in the application and both registrations are partially identical. Therefore, it is presumed that the channels of trade and classes 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)).
In regards to the additional goods being sold by applicant in Class 9, computer software and various kinds of computer hardware, the Trademark Trial and Appeal Board has held that computer hardware products are related to computer software products, such that their marketing under the same or similar marks may be likely to cause source confusion. See In re TIE/Commc’ns, Inc., 5 USPQ2d 1457, 1458 (TTAB 1987) (holding DATA STAR likely to cause confusion when used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Epic Sys. Corp., 228 USPQ 213, 214-15 (TTAB 1985) (holding EPIC for computer software for use in health care facilities likely to be confused with EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (holding Y NET for computer hardware likely to be confused with XYNET for computer software); Alpha Indus., Inc. v. Alpha Microsystems, 220 USPQ 67, 69, 71-72 (TTAB 1983) (holding ALPHA MICRO for digital computer equipment and programs likely to be confused with ALPHA MICROWAVE for microwave components and subassemblies).
Additionally, in relation to applicant’s computer hardware products, registrant for Reg. No. 5010657 uses broad wording to describe its goods simply as “computer hardware”, which presumably encompasses all goods of the type described, including applicant’s more narrow “data processing apparatus; computer memory devices; Computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; acoustic and electric couplers; Computer central processing units; Optical character readers; interfaces for computers; integrated circuit cards / smart cards; memory cards for video game machines; graphics card; Electronic chips for the manufacture of integrated circuits; integrated circuits. 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). Thus, applicant’s and 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, these goods 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, all of applicant’s and registrant’s goods are related.
In regards to the goods listed in registrant’s identification for Reg. No. 5714661’s International Class 28, these goods are highly related to applicant’s listed goods for International Class 9. Specifically, registrant’s “controllers for game consoles” are highly likely to be sold alongside applicant’s “memory cards for video game machines” and “graphics card”. See previously attached evidence from BestBuy, GameStop, Walmart, Office Depot, and NewEgg. Therefore, applicant and registrant’s goods are considered related for likelihood of confusion purposes. Furthermore, applicant applicant’s services in Class 35 are partially identified as being retail and wholesale services offering the goods listed in Class 9. As evident by the previously attached screenshots, there are many third party retailers which sell computers, video games, and computer-related goods online which renders the goods listed in International Class 9 for Reg. No. 5010657 and International Class 28 for Registration No. 5714661 highly related. See previously attached evidence from HP, Dell, Apple, and Microsoft. Thus, these goods and services are related because they are provided in the same channels of trade.
Additionally, applicant provides online retail and wholesale services in International Class 35 featuring computer hardware and software which applicant also listed as goods in their identification for International Class 9. These services therefore also relate to registrant’s identified goods in International Class 9, as discussed above.
Additionally, where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. SeeIn re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). In this case, computer hardware and computer accessories are often sold and marketed together because they can be used without one another, often under the same mark. See previously attached evidence from Dell, Apple, Microsoft and HP. 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).
Lastly, to the extent the evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for every good or service. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.”
In response to applicant’s submission of third party registrations, third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). Also, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
In summary, the marks are confusingly similar and the goods are partially identical and related. Accordingly, purchasers are likely to be confused as to the source of the goods and services. Thus, registration remains refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SPECIMEN: THIS PARTIAL REFUSAL APPLIES TO CLASS 35 ONLY
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 35. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). Specifically, the pictures do not show applicant providing retail or wholesale services for its Class 9 goods, instead, the pictures show applicant advertising its goods at a trade fair.
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 services 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 services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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 services 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.
IDENTIFICATION OF GOODS AND SERVICES
International Class 9:
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Also, the wording “Downloadable computer software applications for data processing and memory devices, namely, downloadable computer software for processing, data storage and input/output accelerating for use with video and computer games” remains indefinite and must be clarified because it is unclear what the field of use or purpose of these goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Similarly, the wording “computer software, recorded, for data processing and memory devices, namely, computer software for image, graphics, text; processing, data storage and accelerating computer functions” and “computer programs, recorded, for data processing and memory devices, namely, computer programs for processing, data storage and accelerating computer functions for use with video and computer games” is indefinite and must be clarified because it is unclear what the field of use or purpose of these goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
International Class 35:
The Identification of Services for International Class 35 is acceptable as written.
In summary, applicant may adopt the following identification, if accurate:
International Class 9: Computers; computer hardware; computer software, recorded, for data processing for use with and memory devices, namely,
computer software for image, graphics, text; processing, and text processing, data storage and accelerating computer functions; data processing apparatus; computer memory
devices; Computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; computer programs, recorded, for
data processing and for use with memory devices, namely, computer programs for {indicate what kind of processing, e.g. image,
graphics, and text} processing, data storage and accelerating computer functions for use with video and computer games; computer peripheral devices; Downloadable computer programs, for data
processing and memory devices, namely, downloadable computer programs for processing, data storage and accelerating computer functions for use with video and computer games; Downloadable computer
software applications for data processing and for use with memory devices, namely, downloadable computer software for {indicate what
kind of processing, e.g. image, graphics, and text} processing, data storage and input/output accelerating computer functions for use with video and computer
games; acoustic couplers; couplers for electronics; Computer central processing units; Optical character readers; interfaces for computers; integrated circuit cards; blank smart cards; memory cards
for video game machines; graphics card; Electronic chips for the manufacture of integrated circuits; integrated circuits
International Class 35: business management assistance; commercial and industrial management assistance; commercial administration of the licensing of the goods and services of others; import-export agency services; commercial information agency services; dissemination of advertising matter; updating of advertising material; advertising and publicity services; advertising agency services; publicity agency services; compiling indexes of information for commercial or advertising purposes; design of advertising materials; compiling indexes of information online for commercial or advertising purposes; on-line advertising on a computer network; organization of trade fairs for commercial or advertising purposes; television advertising; Providing television home shopping services in the field of general consumer merchandise; marketing services; providing business information via a web site; online retail store services featuring computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card; retail store and wholesale services featuring computers, computer hardware, computer software, telecommunication equipment, electronic materials, computer peripherals, and graphics card
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.
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 the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
Sasha Rios
/Sasha Rios/
Trademark Examining Attorney
Law Office 125
P: (571) 272-2616
Sasha.Rios@USPTO.GOV
RESPONSE GUIDANCE