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. 88441073
Mark: ELITE BY MAXI-MATIC
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Correspondence Address:
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Applicant: LIU, BOBBY
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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.
SUMMARY OF ISSUES: 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.
I. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The Marks
The applied-for mark is ELITE BY MAXI-MATIC, in standard characters, for “Deep Fryers, Pressure Cookers, Coffeemakers, Toasters, Blenders, Mixers, Skillets, Air Fryers, Meat Grinders, Meat Slicers, Ice Cream Makers, Ice Makers, Rice Cookers, Toaster Ovens, Multi-Cooker Juicers, Buffet Warmers, Choppers, Egg Cookers, Popcorn Maker, Panini Press, Sandwich Maker, Waffle Maker, Bundt Cake Maker, Slow Cookers, Indoor Grill/Griddles, undefined” in International Class 7, and “Deep Fryers, Pressure Cookers, Coffeemakers, Toasters, Blenders, Mixers, Skillets, Air Fryers, Meat Grinders, Meat Slicers, Ice Cream Makers, Ice Makers, Rice Cookers, Toaster Ovens, Multi-Cooker Juicers, Buffet Warmers, Choppers, Egg Cookers, Popcorn Maker, Panini Press, Sandwich Maker, Waffle Maker, Bundt Cake Maker, Slow Cookers, Indoor Grill/Griddles, undefined” in International Class 11.
The registered marks are as follows:
ELITE, in standard characters, for “barbecue grills” in International Class 11.
ELITE CUISINE BY MAXI-MATIC, in standard characters, for “Electric can openers; Electric coffee grinders; Electric food blenders; Electric food choppers; Electric food processors; Electric food slicers; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric mixers for household purposes” in International Class 7, and “Electric coffee makers; Electric coffee percolators; Electric deep fryers; Electric food steamer; Electric griddles; Electric indoor grills; Electric pressure cookers; Electric rice cookers; Electric skillets; Electric slow cookers; Electric toaster ovens; Electric toasters; Electric waffle maker; Electrical ice-cream makers” in International Class 11.
ELITE PLATINUM BY MAXI-MATIC, in standard characters, for “Electric can openers; Electric coffee grinders; Electric food blenders; Electric food choppers; Electric food slicers; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric mixers for household purposes; Food processors, electric” in International Class 7, and “Electric coffee makers; Electric coffee percolators; Electric deep fryers; Electric egg cookers; Electric food steamers; Electric food warmers; Electric griddles; Electric grills; Electric indoor grills; Electric panini presses; Electric popcorn poppers; Electric pressure cookers; Electric sandwich makers; Electric skillets; Electric slow cookers; Electric toaster ovens; Electric toasters; Electric waffle maker; Electrical ice cream makers; Electrical rice cookers; Gas grills” in International Class 11.
ELITE GOURMET BY MAXI-MATIC, in standard characters, for “Electric can openers; Electric coffee grinders; Electric food blenders; Electric food choppers; Electric food processors; Electric food slicers; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric mixers for household purposes; Food processors, electric” in International Class 7, and “Electric coffee makers; Electric coffee percolators; Electric deep fryers; Electric egg cookers; Electric food steamers; Electric food warmers; Electric griddles; Electric grills; Electric indoor grills; Electric panini presses; Electric popcorn poppers; Electric pressure cookers; Electric sandwich makers; Electric skillets; Electric slow cookers; Electric toaster ovens; Electric waffle maker; Electrical ice cream makers; Electrical rice cookers; Gas grills” in International Class 11.
AMERICANA COLLECTION ELITE BY MAXI-MATIC, in standard characters, for “Coffee roasters; Coffee roasting ovens; Electric coffee brewers; Electric coffee machines; Electric coffee makers; Electric coffee makers; Electric coffee percolators; Electric griddles; Electric sandwich toasters; Electric toaster ovens; Electric toasters; Multi-purpose, electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food” in International Class 11.
Likelihood of Confusion Analysis
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 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. 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 and differences in the marks.”); TMEP §1207.01. Each of these factors is addressed in the sections below.
Similarity of the Marks
The applied-for mark ELITE BY MAXI-MATIC is confusingly similar to the registered marks ELITE, ELITE GOURMET BY MAXI-MATIC, ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC, and AMERICANA COLLECTION ELITE BY MAXI-MATIC, which weighs in favor of a likelihood of confusion. The similarity of the applied-for mark to each of registered mark is addressed in the subsections below.
ELITE – U.S. Trademark Reg. No. 2878325
The applied-for mark ELITE BY MAXI-MATIC is confusingly similar to the registered mark ELITE, which weighs in favor of a likelihood of confusion
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., 901 F.3d 1367, 1373, 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).
The applied-for mark ELITE BY MAXI-MATIC is similar to the registered mark ELITE because they both begin with the identical term ELITE. The applied-for mark differs from the registered mark in that it adds the terms BY MAXI-MATIC, however adding terms to a registered mark generally does not obviate the similarity between the compared marks, or 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). The marks in this case are identical-in-part.
The additional terms BY MAXI-MATIC in the applied-for mark also fails to significantly distinguish it from the registered mark in this case, because the shared term ELITE is the dominant portion of applied-for mark. The shared term ELITE is the dominant portion of the applied-for mark because it is the first term in the mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
The marks ELITE BY MAXI-MATIC and ELITE are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. The more similar the marks, moreover, the less similar the parties’ goods must be to support a finding of likelihood of confusion. See In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC, & ELITE GOURMET BY MAXI-MATIC – U.S. Trademark Reg. Nos. 3746625, 5390162, & 5391380
The applied-for mark ELITE BY MAXI-MATIC is confusingly similar to the registered marks ELITE GOURMET BY MAXI-MATIC, ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC, which weighs in favor of a likelihood of confusion
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., 901 F.3d 1367, 1373, 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).
The applied-for mark ELITE BY MAXI-MATIC is similar to the registered marks ELITE GOURMET BY MAXI-MATIC, ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC, because they all combine the term ELITE with the terms BY MAXI-MATIC. The applied-for mark differs from the registered marks in that it omits the terms GOURMET, CUISINE, and PLATINUM, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression from the registered marks in this case, because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
The omitted terms GOURMET, CUISINE, and PLATINUM in the registered marks also fail to significantly distinguish them from the applied-for mark in this case, because the shared term ELITE is the dominant portion of the marks. The shared term ELITE is the dominant portion of the marks because it is the first term in the marks. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
The applied-for mark ELITE BY MAXI-MATIC is also similar in appearance to the registered marks ELITE GOURMET BY MAXI-MATIC, ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC, because it shares the terms ELITE and BY MAXI-MATIC with each of those marks. 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).
The marks ELITE BY MAXI-MATIC and ELITE GOURMET BY MAXI-MATIC, ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. The more similar the marks, moreover, the less similar the parties’ goods must be to support a finding of likelihood of confusion. See In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
AMERICANA COLLECTION ELITE BY MAXI-MATIC– U.S. Trademark Reg. No. 4484545
The applied-for mark ELITE BY MAXI-MATIC is confusingly similar to the registered mark AMERICANA COLLECTION ELITE BY MAXI-MATIC, which weighs in favor of a likelihood of confusion.
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., 901 F.3d 1367, 1373, 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).
The applied-for mark ELITE BY MAXI-MATIC is similar to the registered mark AMERICANA COLLECTION ELITE BY MAXI-MATIC, because they both contain the terms ELITE BY MAXI-MATIC. The applied-for mark differs from the registered mark in that it omits the terms AMERICANA COLLECTION, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression from the registered marks in this case, because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from that mark.
The applied-for mark ELITE BY MAXI-MATIC is also similar in appearance to the registered mark AMERICANA COLLECTION ELITE BY MAXI-MATIC, because both marks share the terms ELITE BY MAXI-MATIC. Marks may be confusingly similar in appearance where similar 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).
The marks ELITE BY MAXI-MATIC and AMERICANA COLLECTION ELITE BY MAXI-MATIC are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. The more similar the marks, moreover, the less similar the parties’ goods must be to support a finding of likelihood of confusion. See In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Relatedness of the Goods
Applicant’s goods are related to registrants’ goods, which weighs in favor of a likelihood of confusion. The relatedness of applicant’s goods to the goods identified in each of the registrations is addressed in the subsections below.
ELITE – U.S. Trademark Reg. No. 2878325
Applicant’s goods are related to registrant’s “barbecue grills”, which weighs in favor of a likelihood of confusion.
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 application in this case uses broad wording to describe “Indoor Grill/Griddles” and “undefined”, which presumably encompasses all goods of those types, including registrant’s narrower “barbecue grills”. 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). Applicant’s and registrant’s overlapping goods are thus 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)).
The parties’ goods have, moreover, 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)). Applicant’s and registrant’s overlapping goods are related.
Applicant’s goods are, in light of the foregoing, related to registrant’s goods for likelihood of confusion purposes.
ELITE CUISINE BY MAXI-MATIC – U.S. Trademark Reg. No. 3746625
Applicant’s goods are related to registrant’s goods, which weighs in favor of a likelihood of confusion.
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). Likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The application in this case uses broad wording to describe “Deep Fryers, Pressure Cookers”, “Coffeemakers”, “Toasters”, “Blenders”, “Mixers”, “Skillets”, “Ice Cream Makers”, “Rice Cookers”, “Toaster Ovens”, “Juicers”, “Choppers”, “Waffle Maker”, “Slow Cookers”, “Indoor Grill/Griddles”, and “undefined”, which presumably encompasses all goods of those types, including registrant’s narrower “Electric food blenders”, “Electric food choppers”, “Electric food slicers”, “Electric juice extractors”, “Electric juicers”; “Electric meat grinders”, “Electric mixers for household purposes”, “Electric coffee makers”, “Electric coffee percolators”, “Electric deep fryers”, “Electric griddles”, “Electric indoor grills”, “Electric pressure cookers”, “Electric rice cookers”, “Electric skillets”, “Electric slow cookers”, “Electric toaster ovens”, “Electric toasters”, “Electric waffle maker”, and “Electrical ice-cream makers”. 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). Applicant’s and registrant’s overlapping goods are thus 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)).
The parties’ goods have, moreover, 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)). Applicant’s and registrant’s overlapping goods are related.
Applicant’s goods are also related to registrant’s goods because of the way they are marketed and sold. 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] 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 evidence from Cuisinart.com, KitchenAid.com, and HamiltonBeach.com shows that a wide variety of electrical and non-electrical appliances, including those identified in the application and registration, are commonly marketed and sold from the same sources, under the same brand or mark. Cuisinart, for example, markets and sells a wide variety of appliances, including toaster ovens, popcorn poppers, and food processors, all under the Cuisinart brand name.
Applicant’s goods are, in light of the foregoing, related to registrant’s goods for likelihood of confusion purposes.
ELITE PLATINUM BY MAXI-MATIC – U.S. Trademark Reg. No. 5390162
Applicant’s goods are related to registrant’s goods, which weighs in favor of a likelihood of confusion.
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). Likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The application in this case uses broad wording to describe “Deep Fryers, Pressure Cookers, Coffeemakers, Toasters, Blenders, Mixers, Skillets, Air Fryers, Meat Grinders, Meat Slicers, Ice Cream Makers, Ice Makers, Rice Cookers, Toaster Ovens, Multi-Cooker Juicers, Buffet Warmers, Choppers, Egg Cookers, Popcorn Maker, Panini Press, Sandwich Maker, Waffle Maker, Bundt Cake Maker, Slow Cookers, Indoor Grill/Griddles, undefined”, which presumably encompasses all goods of those types, including registrant’s narrower “Electric food blenders”, “Electric food choppers”, “Electric food slicers”, “Electric juice extractors”, “Electric juicers”, “Electric meat grinders”, “Electric mixers for household purposes”, “Electric coffee makers”, “Electric coffee percolators”, “Electric deep fryers”, “Electric egg cookers”, “Electric food warmers”, “Electric griddles”, “Electric grills”, “Electric indoor grills”, “Electric panini presses”, “Electric popcorn poppers”, “Electric pressure cookers”, “Electric sandwich makers”, “Electric skillets”, “Electric slow cookers”, “Electric toaster ovens”, “Electric toasters”, “Electric waffle maker”, “Electrical ice cream makers”, “Electrical rice cookers”, “Gas grills”. 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). Applicant’s and registrant’s overlapping goods are thus 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)).
The parties’ goods have, moreover, 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)). Applicant’s and registrant’s overlapping goods are related.
Applicant’s goods are also related to registrant’s goods because of the way they are marketed and sold. 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] 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 evidence from Cuisinart.com, KitchenAid.com, and HamiltonBeach.com shows that a wide variety of electrical and non-electrical appliances, including those identified in the application and registration, are commonly marketed and sold from the same sources, under the same brand or mark. Cuisinart, for example, markets and sells a wide variety of appliances, including toaster ovens, popcorn poppers, and food processors, all under the Cuisinart brand name.
Applicant’s goods are, in light of the foregoing, related to registrant’s goods for likelihood of confusion purposes.
ELITE GOURMET BY MAXI-MATIC – U.S. Trademark Reg. Nos. 5391380
Applicant’s goods are related to registrant’s goods, which weighs in favor of a likelihood of confusion.
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). Likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The application in this case uses broad wording to describe “Deep Fryers, Pressure Cookers, Coffeemakers, Toasters, Blenders, Mixers, Skillets, Air Fryers, Meat Grinders, Meat Slicers, Ice Cream Makers, Ice Makers, Rice Cookers, Toaster Ovens, Multi-Cooker Juicers, Buffet Warmers, Choppers, Egg Cookers, Popcorn Maker, Panini Press, Sandwich Maker, Waffle Maker, Bundt Cake Maker, Slow Cookers, Indoor Grill/Griddles, undefined”, which presumably encompasses all goods of those types, including registrant’s narrower “Electric can openers”, “Electric coffee grinders”, “Electric food blenders”, “Electric food choppers”, “Electric food processors”, “Electric food slicers”, “Electric juice extractors”, “Electric juicers”, “Electric meat grinders”, “Electric mixers for household purposes”, “Electric coffee makers”, “Electric coffee percolators”, “Electric deep fryers”, “Electric egg cookers”, “Electric food warmers”, “Electric griddles”, “Electric grills”, “Electric indoor grills”, “Electric panini presses”, “Electric popcorn poppers”, “Electric pressure cookers”, “Electric sandwich makers”, “Electric skillets”, “Electric slow cookers”, “Electric toaster ovens”, “Electric waffle maker”, “Electrical ice cream makers”, “Electrical rice cookers”, and “Gas grills”. 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). Applicant’s and registrant’s overlapping goods are thus 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)).
The parties’ goods have, moreover, 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)). Applicant’s and registrant’s overlapping goods are related.
Applicant’s goods are also related to registrant’s goods because of the way they are marketed and sold. 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] 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 evidence from Cuisinart.com, KitchenAid.com, and HamiltonBeach.com shows that a wide variety of electrical and non-electrical appliances, including those identified in the application and registration, are commonly marketed and sold from the same sources, under the same brand or mark. Cuisinart, for example, markets and sells a wide variety of appliances, including toaster ovens, popcorn poppers, and food processors, all under the Cuisinart brand name.
Applicant’s goods are, in light of the foregoing, related to registrant’s goods for likelihood of confusion purposes.
AMERICANA COLLECTION ELITE BY MAXI-MATIC– U.S. Trademark Reg. No. 4484545
Applicant’s goods are related to registrant’s goods, which weighs in favor of a likelihood of confusion.
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). Likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The application in this case uses broad wording to describe “Deep Fryers, Pressure Cookers, Coffeemakers, Toasters, Blenders, Mixers, Skillets, Air Fryers, Meat Grinders, Meat Slicers, Ice Cream Makers, Ice Makers, Rice Cookers, Toaster Ovens, Multi-Cooker Juicers, Buffet Warmers, Choppers, Egg Cookers, Popcorn Maker, Panini Press, Sandwich Maker, Waffle Maker, Bundt Cake Maker, Slow Cookers, Indoor Grill/Griddles, undefined”, which presumably encompasses all goods of those types, including registrant’s narrower “Electric coffee brewers”, “Electric coffee machines”, “Electric coffee makers”, “Electric coffee makers”, “Electric coffee percolators”, “Electric griddles”, “Electric sandwich toasters”, “Electric toaster ovens”, “Electric toasters”, “Multi-purpose, electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food”. 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). Applicant’s and registrant’s overlapping goods are thus 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)).
The parties’ goods have, moreover, 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)). Applicant’s and registrant’s overlapping goods are related.
Applicant’s goods are also related to registrant’s goods because of the way they are marketed and sold. 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] 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 evidence from Cuisinart.com, KitchenAid.com, and HamiltonBeach.com shows that a wide variety of electrical and non-electrical appliances, including those identified in the application and registration, are commonly marketed and sold from the same sources, under the same brand or mark. Cuisinart, for example, markets and sells a wide variety of appliances, including toaster ovens, popcorn poppers, and food processors, all under the Cuisinart brand name.
Applicant’s goods are, in light of the foregoing, related to registrant’s goods for likelihood of confusion purposes.
Conclusion
The applied-for mark ELITE BY MAXI-MATIC is confusingly similar to the registered marks ELITE, ELITE GOURMET BY MAXI-MATIC, ELITE CUISINE BY MAXI-MATIC, ELITE PLATINUM BY MAXI-MATIC, and AMERICANA COLLECTION ELITE BY MAXI-MATIC, despite omitted wording in one of the registered marks, and additional wording in the remaining four registered marks. Applicant’s goods are also related to the goods identified in the registration. Registration for the applied-for mark is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the mark in U.S. Registration Nos. 2878325, 3746625, 4484545, 5390162, and 539138.
Advisory – Ownership of Cited Registrations
(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 Nos. 3746625, 4484545, 5390162, and 539138.” 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).
II. AMENDMENT REQUIRED – IDENTIFICATION OF GOODS
Indefinite and Overbroad Wording in Identification
Applicant must clarify the wording “pressure cookers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric pressure cookers” are in International Class 11, while “non-electric pressure cookers” are in International Class 21.
Applicant must clarify the wording “coffeemakers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric coffee makers” are in International Class 11, while “non-electric coffee makers” are in International Class 21.
Applicant must clarify the wording “toasters” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric toasters for household purposes” are in International Class 11, while “non-electric toasters” are in International Class 21.
Applicant must clarify the wording “blenders” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric food blenders for household purposes” are in International Class 7, while “non-electric food blenders for household purposes” are in International Class 21.
Applicant must clarify the wording “mixers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “kitchen machines in the nature of electric mixers” are in International Class 7, while “non-electric food mixers for household purposes” are in International Class 21.
Applicant must clarify the wording “skillets” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods and/or services in more than one international class. For example, “electric skillets” are in International Class 11, while non-electric “skillets” are in International Class 21.
Applicant must clarify the wording “meat grinders” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric meat grinders” are in International Class 7, while “non-electric meat grinders” are in International Class 21.
Applicant must clarify the wording “meat slicers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric food slicers in the nature of meat slicers” would be classified in International Class 7, while “non-electric food slicers in the nature of meat slicers” would be classified in International Class 8.
Applicant must clarify the wording “ice cream makers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric ice cream makers” are in International Class 11, while “non-electric ice cream makers” are in International Class 21.
The wording “ice makers” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not identify particular goods in the class, e.g. “ice making machines.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “rice cookers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric rice cookers” are in International Class 11, while “rice cookers for use in microwave ovens” is in International Class 21.
The wording “toaster ovens” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not specify that the goods are “electric”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “multi-cooker juicers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “multicookers” and “electric juicers” are in International Class 11, while “non-electric juicers” are in International Class 21.
The wording “buffet warmers” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not identify particular goods in the class, e.g. “buffet warmers in the nature of electric food warmers.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “choppers” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric food choppers” are in International Class 7, while “hand-operated choppers” are in International Class 8.
The wording “egg cookers” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not specify that the goods are “electric”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “popcorn maker” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric popcorn poppers” are in International Class 11, while “popcorn poppers for use in microwave ovens” are in International Class 21.
The wording “panini press” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not specify that the goods are “electric”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “sandwich maker” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not specify that the goods are “electric”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “bundt cake maker” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not specify that the goods are “electric”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “slow cookers” in the identification of goods in International Class 11 is indefinite and must be clarified because it does not specify that the goods are “electric”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the wording “indoor grill/griddle” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify particular goods in either class. Further, this wording could identify goods in more than one international class. For example, “electric griddles” are in International Class 11, while “cooking utensils in the nature of non-electric griddles” are in International Class 21.
Applicant must clarify the wording “undefined” in the identification of goods in International Class 11 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it is open-ended and might specify goods and/or services in every International Class.
Duplicate Entries in the Identification
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Punctuation in Identification
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.
Suggested Wording for Identification
Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):
“Electric appliances for household purposes, namely, Deep Fryers, Pressure Cookers, Coffeemakers, Toasters,
food blenders, mixers, Skillets, Air Fryers, meat grinders, food
slicers in the nature of meat slicers, Ice Cream Makers, Ice Makers, Rice Cookers, Toaster Ovens, Multi-Cooker juicers,
Buffet Warmers, food choppers, Egg Cookers, Popcorn Maker, Panini Press, Sandwich Maker, Waffle Maker, Bundt Cake Maker, Slow Cookers, Indoor
Grill/Griddles, undefined” in International Class 7.
“Non-electric foods slicers in the nature of meat slicers; hand-operated choppers” in International Class 8.
“Electric appliances, namely, deep fryers, pressure cookers, coffee makers, toasters, Blenders, Mixers, skillets, air fryers, Meat Grinders, Meat
Slicers, ice cream makers, ice Makers making machines, rice cookers, toaster ovens, multicookers, Juicers, buffet warmers in the nature of electric food warmers, Choppers, egg cookers, popcorn Maker poppers, panini press, sandwich maker, waffle maker, bundt cake maker, slow cookers, indoor grills, /indoor griddles, undefined” in International Class 11.
“Non-electric appliances, namely, deep fryers, pressure cookers, coffee makers, toasters, food blenders, food mixers for household purposes, skillets, ice cream makers, rice cookers for use in microwave ovens, juicers, popcorn poppers for use in microwave ovens, indoor cooking utensils in the nature of non-electric griddles” in International Class 21.
Applicant will be required to add International Classes 8 and 21 should it choose to adopt the above suggested wording. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1) et seq., 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Advisories – ID Manual and Scope of Amendments
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.
III. MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least four classes; however, applicant submitted a fee sufficient for only two classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 11, and applicant needs a specimen for classes 7, 8, and 21. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
SUGGESTION TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
Click HERE to file a response to this non-final Office action
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.
/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@uspto.gov
