Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

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

 

Issue date:  August 16, 2019

 

Search Results

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues That Applicant Must Address

 

·       Section 2(d) refusal based on a likelihood of confusion with a registered mark

·       Domicile and U.S. Counsel requirement

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5064169.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant’s mark is “KINGSONS” for “Attaché cases; Backpacks; Handbags; Leather cases; Leather or leather-board boxes; Pouches of leather; Purses; School bags; Suitcases; Travelling bags” in International Class 18.  The registrant’s mark is “KINGSONS” stylized for “Bags adapted for laptops; Carrying cases for cell phones; Carrying cases for mobile computers; Cases adapted for computers; Laptop carrying cases; Notebook computer carrying cases; Sleeves for laptops; Wheeled backpacks especially adapted for holding laptops; Protective sleeves for laptop computers; Wheeled messenger bags especially adapted for holding laptops” in International Class 9.

 

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

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is “KINGSONS” and registrant’s mark is “KINGSONS”.  These marks are 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 they are identical in sound and meaning, 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.

 

The slight stylization of the registrant’s mark does not change the sound or the meaning of the mark.  Therefore, the marks are confusingly similar. 

 

Relatedness of the Goods

 

The applicant’s goods are “Attaché cases; Backpacks; Handbags; Leather cases; Leather or leather-board boxes; Pouches of leather; Purses; School bags; Suitcases; Travelling bags” in International Class 18.  The registrant’s goods are “Bags adapted for laptops; Carrying cases for cell phones; Carrying cases for mobile computers; Cases adapted for computers; Laptop carrying cases; Notebook computer carrying cases; Sleeves for laptops; Wheeled backpacks especially adapted for holding laptops; Protective sleeves for laptop computers; Wheeled messenger bags especially adapted for holding laptops” in International Class 9.

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The applicant’s goods and the registrant’s goods are closely related goods likely to come from a common source.  Specifically, the registrant’s various carrying cases and bags specifically adapted for use with electronic goods and the applicant’s general carrying cases and bags are types of goods that are commonly sold together under a single mark. 

 

The attached Internet evidence, consisting of web excerpts for Samsonite, Tumi and Delsey, establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark.  Specifically, attached web excerpts shows that general luggage, carrying cases, bags, and backpacks, and carrying cases, backpacks, and bags specifically adapted for carrying electronic devices such as laptops and computers are types of goods that come from a common source. Thus, applicant’s and registrant’s goods and/or services 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).

 

Purchasers of applicant’s goods could mistakenly assume such goods were produced by registrant, or that applicant and registrant are related in some way.  Because the marks are highly similar and the goods are closely related, the similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers as to the source of the goods. 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, since the marks are confusingly similar and the goods are closely related, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Domicile and U.S. Counsel Requirement

 

Applicant must provide additional information and documentation about its domicile.  To permit proper examination of the application as to whether the address provided in the application is applicant’s domicile and applicant is subject to the requirement under 37 C.F.R. §2.11(a) to be represented by a U.S.-licensed attorney, applicant must provide the additional information and documentation below.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; TMEP §814. 

 

An applicant’s domicile address is an application requirement and also dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent them at the USPTO.  See 37 C.F.R. §§2.11(a), 2.22(a)(1), 2.32(a)(2), 2.189.  An applicant whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a).  Foreign citizens must comply with U.S. visa immigration laws to claim the United States as their permanent legal residence. 

 

In this case, it is unclear from the application record whether the U.S. street address provided is actually the address of applicant’s permanent legal residence/principal place of business.  Applicant must therefore provide all of the following:

 

(1)       An explanation of the basis for claiming that the United States address provided in the “Owner Information” section of the application is applicant’s lawful permanent residence (if an individual) or business headquarters (if a juristic entity).  For example, if applicant is an individual who is a foreign citizen, applicant may state that he or she has a valid form I-551 that admits applicant to live in the United States as a permanent resident, and provide the dates of issuance and expiration of the I-551.  A juristic entity may state that it is an entity actively registered in a specific U.S. state or territory at the designated address, as established by documentation submitted from the relevant office or agent of that state or territory.

 

(2)       Documentation showing that the address in the application is applicant’s address of residence (for an individual) or business headquarters (for a juristic entity), such as:

(i) a valid signed rental, lease, or mortgage agreement dated within one year of the application filing date;

(ii) a valid homeowner’s, renter’s, or motor vehicle insurance policy dated within one year of the application filing date;

(iii) a computer generated bill issued by a utility company dated within 60 days of the application filing date; or

(iv) change-of-address confirmation from the U.S. Postal Service showing applicant’s prior and current address (Form CNL107). 

 

Submitted documentation must show the name and address of the residence or business and the date of the document but should redact other personal and financial information. 

 

Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants & Registrants, Examination Guide 4-19, at I.A.3 (Aug. 2019); see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

If the U.S. street address of record is not applicant’s correct or current domicile address, applicant must provide its correct and current principal place of business address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.  If applicant provides a different U.S. street address as its domicile address, applicant must provide the same information and documentation requested above.

 

Failure to comply with this request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Applicant also is advised that providing false statements or documentation concerning applicant’s domicile address or in response to this request for information is deemed submitting a paper for an improper purpose in violation of 37 C.F.R. §11.18(b), and subject to the sanctions and actions provided in 37 C.F.R. §11.18(c).  See 37 C.F.R. §2.11(e).

 

To provide the explanatory statement and documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) provide in the text box a statement explaining the basis for applicant’s claim that the listed address is applicant’s physical domicile address; and (2) click the button below the text box to attach evidence showing the U.S. address is applicant’s domicile. 

 

If the listed address is not applicant’s correct or current domicile, provide applicant’s physical domicile address by opening the correct TEAS response form, answering “yes” to wizard question #5, and providing applicant’s physical domicile address on the “Owner Information” page.  If applicant provides a different U.S. street address, applicant will need to follow the directions for providing the additional information and documentation requested above.

 

Applicant must be represented by a U.S.-licensed attorney because it is not clear that applicant’s current address supports domicile in the United States.  Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See 37 C.F.R. §§2.2(o), 2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant can establish domicile in the United States, this requirement may be withdrawn.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

Response to Office Action

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/Jenny Park/

Examining Attorney

Law Office 104

571-272-8857

jenny.park@uspto.gov

 

 

RESPONSE GUIDANCE

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

 

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

 

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

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 16, 2019 for

U.S. Trademark Application Serial No. 88442519

 

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

 

(1)  Read the official letter.

 

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

 

 

/Jenny Park/

Examining Attorney

Law Office 104

Phone: 571-272-8857

jenny.park@uspto.gove

 

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

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 16, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

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

 

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

 

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