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 29, 2019

 

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. 

 

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, 2.65(a); TMEP §§711, 718.03.

 

 

 

Summary of Issues Applicant Must Address

 

(1)   Refusal under Trademark Act Section 2(d) – Likelihood of Confusion; and

(2)   Requirement to Amend Identification of Goods

Refusal - Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4483077 and 5041535. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrants. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

A.  Comparison of Marks

Applicant’s mark ROCKETS is virtually identical and highly similar to the registered marks ROCKET and RAZZI in sound, appearance and commercial impression.

Regarding the registered mark ROCKET, the only difference between the marks is the letter “S” at the end of the proposed mark.  However, an applied-for mark that is the plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

As for the registered mark RAZZI, the Italian term “Razzi” means “Rockets” in English.  See the translation statement of record associated with the cited registration and attached sample Internet printouts.  For purposes of evaluating a trademark, material obtained from the Internet is accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark is in Italian, which is a common, modern language in the United States.  See In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (Italian).  The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.  As noted by the attached Internet printout from the U.S. Census Bureau, 708,966 consumers over the age of five years old in the United States are familiar with the Italian language.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the Italian language is a common, modern language spoken by an appreciable number of consumers in the United States.

B.  Comparison of Goods

Applicant’s “publications and printed matter, namely, basketball trading cards, trading cards, stickers, decals, temporary tattoo transfers, commemorative basketball stamps, commemorative basketball game tickets, collectible cardboard trading discs, stick-on whiteboards and dry-erase boards, memorandum boards, clipboards, paper coasters, post cards, place mats of paper, facial tissues, note cards, memo pads, notepads, ball point pens, crayons, felt tip markers, rubber bands, pens and pencils, pen and pencil cases, pen and writing paper holders, desktop document stands, scrap books, rubber stamps, drafting rulers, paper banners and flags, 3-ring binders, stationery folders, wire-bound notebooks, portfolio notebooks, unmounted and mounted photographs, lithographs, art prints, posters, calendars, bumper stickers, book covers, bookmarks, wrapping paper, children's activity books [and] children's coloring books”, “statistical books, guide books and reference books all in the field of basketball”, “magazines in the field of basketball, catalogs in the field of basketball, commemorative game and souvenir programs related to basketball, paper pennants, stationery, stationery-type portfolios, invitation cards, printed certificates, greeting cards, Christmas cards, holiday cards [and] informational statistical sheets for basketball topics”, “newsletters, brochures, pamphlets, and game schedules in the field of basketball”, “bank checks, check book covers, check book holders, passport holders, money clips [and] comic books”, “non-magnetically encoded credit cards, gift cards and telephone calling cards”, “printed tickets for sporting and entertainment events” and “collectible card holders and memorabilia holders in the nature of ticket holders [and] trading card holders” are identical and closely related to the registrants’ “albums, namely, photograph albums, sticker albums”, “bookends”, “document files in the nature of stationery”, “writing slates”, “loose-leaf binders”, “table and paper mats for beer glasses”, “paper and file folders for papers”, “pencil holders”, “decalcomanias in the nature of transfers”, “etchings”, “pen nibs”, “pen cases”, “erasing products, namely, erasers, ink erasers”, “rubber erasers”, “paperweights”, “blackboards”, “stationery”, “photograph stands”, “bookmarkers”, “stands for pens and pencils”, “paper knives in the nature of office requisites”, “pencil sharpeners, electric or non-electric”, “penholders”, “adhesive gum for stationery or household purposes”, “holders for checkbooks”, “cheque books”, “writing board erasers”, “money clips”, “document holders in the nature of stationery”, “coasters, not of paper and other than table linen”, “pens”, “erasers”, “activity sets consisting of coloring paper and markers”, “stickers”, “decals”, “die cut sticky writing pads”, “magnetic writing pads”, “blank journals” and “temporary tattoo transfers” because they are stickers, decals, temporary tattoo transfers, writing boards and pads, coasters, paper mats, pens, pencils and other writing and cases/holders therefor, binders, photograph products, activity and coloring books, stationery, bank checks and check book covers and holders therefor, money clips and related printed materials likely to travel through the same channels of trade to the same class of purchasers. For example, the goods are likely to be sold together in retail office, card, stationery, home, school and toy supply stores and department stores and advertised together in office, card, stationery, home, school and toy supply catalogs, directories and trade publications.

Furthermore, with respect to applicant’s and registrants’ goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registrations at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Absent restrictions in an application and/or registration, the identified goods 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

In this case, the identifications set forth in the application and registrations have no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade and are available to the same class of purchasers.

Further, the registrations use broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including stickers, decals, temporary tattoo transfers, writing boards and pads, coasters, paper mats, pens, pencils and other writing and cases/holders therefor, binders, photograph products, activity and coloring books, stationery, bank checks and check book covers and holders therefor, money clips and related printed materials all themed and relating to basketball, which are identical and undeniably commercially-related to the applicant’s goods.

In further support of the relationship between the goods of the parties, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of twenty-five third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely, sports cards/publications, including those relating to basketball, and stickers, decals, temporary tattoos, pens/pencils, stationery and/or money clips and paper coasters and coasters not made of paper, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

What’s more, where the marks of the respective parties are virtually identical and highly similar, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrants 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 registrants. 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, 1025 (Fed. Cir. 1988).

Based on the foregoing remarks, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

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

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

Identification of Goods

The wording “trading cards”, “commemorative basketball stamps”, “commemorative basketball game tickets”, “game schedules”, “ticket holders” and “trading card holders” in the identification of goods is indefinite and must be amended to clarify the nature of the goods intended to be associated with the applied-for mark, as noted below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

Applicant must also correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods 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 within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id.

Furthermore, applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 16 for “money clips.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

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.  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).

The applicant may adopt any or all of the following descriptions, if accurate:

“Publications and printed matter, namely, collectible basketball trading cards, sports trading cards in the field of basketball, trading cards other than for games, stickers, decals, temporary tattoo transfers, commemorative basketball postage stamps, commemorative basketball stamp sheets, printed commemorative basketball game tickets, collectible cardboard trading discs, stick-on whiteboards and dry-erase boards, memorandum boards, clipboards, paper coasters, post cards, place mats of paper, facial tissues, note cards, memo pads, notepads, ball point pens, crayons, felt tip markers, rubber bands, pens and pencils, pen and pencil cases, pen and writing paper holders, desktop document stands, scrap books, rubber stamps, drafting rulers, paper banners and flags, three-ring binders, stationery folders, wire-bound notebooks, portfolio notebooks, unmounted and mounted photographs, lithographs, art prints, posters, calendars, bumper stickers, book covers, bookmarks, wrapping paper, children's activity books and children's coloring books; statistical books, guide books and reference books all in the field of basketball; magazines in the field of basketball; catalogs in the field of basketball; commemorative game and souvenir programs related to basketball; paper pennants; stationery; stationery-type portfolios; invitation cards; printed certificates; greeting cards; Christmas cards; holiday cards; informational statistical sheets for basketball topics; newsletters, brochures, pamphlets and paper game schedules in the field of basketball; bank checks; check book covers; check book holders; passport holders; money clips; comic books; non-magnetically encoded credit cards, gift cards and telephone calling cards; printed tickets for sporting and entertainment events; collectible card holders and memorabilia holders in the nature of printed ticket holders and collectible trading card holders”, in International Class 16; and/or

“Printed matter, namely, basketball trading cards for games and trading cards for games”, in International Class 28.

TMEP §1402.11.

For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Furthermore, any goods deleted by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e).

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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)(iii), 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.

Miscellaneous

If applicant’s counsel has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

Advisory Regarding E-mail Communications

If applicant’s counsel 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. §2.191; TMEP §§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  

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@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 29, 2019 for

U.S. Trademark Application Serial No. 88461831

 

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. 

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@uspto.gov

 

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 29, 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.”