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 23, 2019

 

 

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

 

SUMMARY OF ISSUES:

·        PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – LIMITED TO SELECT GOODS

·        PRIOR FILED APPLICATION

·        FAILURE TO FUNCTION: GOODS NOT USED IN TRADE—LIMITED TO SELECT GOODS IN INTERNATIONAL CLASS 039

·        SPECIMEN REFUSAL—SPECIMEN FAILS TO SHOW MARK IN USE IN COMMERCE—LIMITED TO INTERNATIONAL CLASS 044

·        IDENTIFICATION OF GOODS AND SERVICES MISCLASSIFIED, INDEFINITE, AND OVERBROAD

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The following refusal is limited to “packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy” currently identified in International Class 39 ONLY.

 

Registration of the applied-for mark is refused for the identification of “packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy,” because of a likelihood of confusion with the mark in U.S. Registration No. 4724300.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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 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 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.

 

Applicant has applied to register the mark “PHENOM” in standard characters for “packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy” in International Class 039.

 

Registrant’s mark is “PHENOM” in standard characters in International Class 017 for “adhesive packing tape for industrial or commercial use; packing and insulating material; packing padding of plastic for shipping containers.”

 

Comparison of the Marks

 

Applicant’s and registrant’s mark are both “PHENOM.”  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Goods

 

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).

 

The compared goods and 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).

 

Registrant has identified “packing and insulating material” as goods it provides in International Class 017, and applicant has identified “packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy.” 

 

Determining likelihood of confusion is based on the description of the goods and/or services 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)).  

 

In this case, the registration uses broad wording to describe packaging and insulating material, which presumably encompasses all goods of the type described, including applicant’s narrower packaging for specific goods.  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, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are presumed related.

 

Conclusion

 

In the present case applicant’s and registrant’s marks are identical, applicant’s goods are encompassed by registrant’s goods, and the applicant’s and registrant’s goods are provided through the same channels of trade.  Therefore applicant’s mark is refused under Section 2(d) of the Trademark Act for the identification of “packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy.”

 

If applicant responds to the refusal, applicant must also respond to the potential refusal set forth below.

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88189861 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the potential refusal, applicant must also respond to the refusals set forth below.

 

FAILURE TO FUNCTION: GOODS NOT USED IN TRADE—LIMITED TO SELECT GOODS IN INTERNATIONAL CLASS 039

 

Registration is refused because the following goods in International Class 039 in the application do not appear to be “goods in trade”:  “Packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy.”  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; TMEP §1202.06(b).

 

“Goods in trade” are items that an applicant sells or transports in commerce for use by others.  See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06.  Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers.  TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).

 

Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether:

 

(1)       The goods are simply the conduit or necessary tool useful only to obtain applicant’s services;

 

(2)       The goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and

 

(3)       The goods are neither sold separately from nor have any independent value apart from applicant’s services.

 

In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06.  None of these factors is necessarily dispositive.  Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06.

 

In this case, applicant’s “packaging for foam rollers” are not independent goods in trade but rather are merely incidental to applicant’s services because it does not appear that the applicant is selling packaging for foam rollers to third-parties, but rather is utilizing packaging for its own products.  Applicant is required to demonstrate that the goods in question are not merely for indirect use in relation to their own products, but are being sold as a product to others.

 

Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f) or amending the application to the Supplemental Register.  TMEP §1202.06(b).

 

If applicant responds to the refusal, applicant must also respond to the refusal set forth below.

 

SPECIMEN REFUSAL—SPECIMEN FAILS TO SHOW MARK IN USE IN COMMERCE—LIMITED TO INTERNATIONAL CLASS 044

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 044.  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). 

 

The specimens provided by applicant fail to demonstrate that it provides medical, physical rehabilitation, massage, or physical therapy services in International Class 044.  While the specimen appears to show the mark in association with specific goods, it does not demonstrate the mark being used in association with the services described by applicant.  Therefore, the applicant has failed to demonstrate that the mark is being used in commerce for the services described in International Class 044.  Rather, it appears applicant has included the listing of services in International Class 044 as a list of potential uses for applicant’s goods rather than a listing of services the applicant actually provides.

 

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.

 

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

 

IDENTIFICATION OF GOODS AND SERVICES MISCLASSIFIED, INDEFINITE, AND OVERBROAD

 

Applicant must clarify the wording “packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy” in the identification of goods and/or services in International Class 039 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 “packaging” could refer either to physical goods or packaging services.  Further, this wording could identify goods and/or services in more than one international class.  For example, “cardboard packaging” is in International Class 016 and “merchandise packaging for others” is in International Class 039. 

 

Applicant may substitute the following wording, if accurate:  “cardboard packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy.”

 

Applicant has classified “fitness rollers for use in fitness, sports medicine, and medical and physical therapy” in International Class 039; however, the identification would be properly classification partially in both International Classes 010 and 028.  Therefore, applicant may respond by reclassifying these goods in the proper international classes.  The wording, as described above, is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because applicant must provide additional details about the materials the roller is composed of.  Further, this wording could identify goods and/or services in more than one international class.  For example, “foam rollers for use in physical therapy” are in International Class 010 and “physical fitness equipment” is in International Class 028. 

 

Applicant may substitute the following wording, if accurate:  in International Class 010, “foam rollers for use for sports medicine, medical, and physical therapy use,” and in International Class 028, “physical fitness equipment, namely, foam fitness rollers for use in fitness.”

 

Applicant has classified “vibrating massage device for fitness, sports medicine, and medical and physical therapy use” in International Class 039; however, the identification would be properly classified in International Classes 010, as all “massage apparatus” are classified in International Class 010.  Therefore, applicant may respond by reclassifying these goods in the proper international classes.  The wording, as described above, is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Applicant may substitute the following wording, if accurate, in International Class 010: “massage apparatus, namely, vibrating massage devices for fitness, sports medicine, medical and physical therapy use.”

 

Applicant may adopt the following identification of goods and services, if accurate:

 

            International Class 010

 

Massage foam rollers for use in physical rehabilitation, physical therapy and sports medicine equipment all designed specifically for medical use, namely, vibrating foam rollers; foam rollers for use for sports medicine, medical, and physical therapy use; electric massage appliances, namely, electric vibrating massage devices for fitness, sports medicine, medical and physical therapy use

 

International Class 016

 

Cardboard packaging for foam rollers for use in fitness, sports medicine, and medical and physical therapy[1]

 

International Class 028

 

Vibrating apparatus used in fitness and exercise programs to stimulate muscles and increase strength and physical performance; physical fitness equipment, namely, foam fitness rollers for use in fitness

 

International Class 044

 

Medical, physical rehabilitation, massage and physical therapy services

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

Comments

 

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

 

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. 

 

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.

 

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.

 

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  

 

 

Goran, Bradley

/Bradley Goran/

Examining Attorney

USPTO

Law Office 107

(571) 270-7482

bradley.goran@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.