To: | Rocket Ball, Ltd. (ipgroup@nba.com) |
Subject: | U.S. Trademark Application Serial No. 88461976 - ROCKETS - 5336-US-NF5 |
Sent: | August 29, 2019 09:59:30 PM |
Sent As: | ecom118@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88461976
Mark: ROCKETS
|
|
Correspondence Address: OLYMPIC TOWER - 645 FIFTH AVENUE
|
|
Applicant: Rocket Ball, Ltd.
|
|
Reference/Docket No. 5336-US-NF5
Correspondence Email Address: |
|
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.
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.
Summary of Issues Applicant Must Address
(1) Refusal under Trademark Act Section 2(d) – Likelihood of Confusion; and
(2) Requirement to Amend Identification and Classification of Goods
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. 4483077. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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 registrant. 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
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).
B. Comparison of Goods
Applicant’s “toy boxes and chests”, “pillows and seat cushions”, “portable and folding stadium seats and cushions”, “plastic key tags”, “picture frames”, “hand-held mirrors”, “roller shades for windows with suction cups”, “caddies in the nature of magazine racks”, “wall plaques made of wood”, “wall plaques made of plastic”, “soft sculpture wall decorations”, “non-metal reusable bottle caps”, “non-metal clips for tablecloths”, “wooden signboards”, “decorative mobiles”, “steel furniture”, “recliners, chairs and stools”, “tables”, “portable and folding sports seats and stools”, “furniture”, “juvenile furniture”, “bedroom furniture”, “clothes hangers and coat hangers”, “non-metal trophy cups”, “bean bag chairs”, “non-metal coat racks”, “non-metal stands for holding and displaying various types of balls”, “dividers for drawers”, “plastic figurines”, “plastic pet identification tags”, “wood boxes”, “furniture chests”, “gift package decorations made of plastic”, “plastic novelty license plates”, “plastic name badges”, “non-metal name plates”, “figurines of plastic in the nature of garden gnomes” and “pillows and beds for household pets” are identical and closely related to the registrant’s “beds for household pets”, “nesting boxes for household pets”, “kennels for household pets”, “corks for bottles”, “corks”, “bottle racks”, “furniture”, “hat stands”, “dog kennels”, “coat hangers”, “corrugated and thermoformed plastic trays, not of metal”, “coat hooks, not of metal”, “fixed towel dispensers, not of metal”, “racks in the nature of furniture”, “closures, not of metal, for containers”, “newspaper display stands”, “magazine racks”, “coat stands”, “umbrella stands”, “mirrors”, “display and peg boards for hanging keys”, “works of art of wood, wax, plaster or plastic”, “bottle caps, not of metal”, “bottle closures not of metal”, “bins of wood or plastic”, “foot stools”, “inflatable publicity objects”, “woven timber blinds in the nature of furniture”, “pet cushions”, “hand-held toilet mirrors”, “towel closets in the nature of furniture” and “book rests in the nature of furniture” because they are cushions/pillows and beds for household pets, bottle stoppers, coat hangers and racks, furniture, containers and closures therefor and mirrors including hand-held mirrors 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 furniture, home goods and department stores and advertised together in home goods and furniture supply catalogs, directories and trade publications.
Furthermore, with respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration 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 registration 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 registration uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including cushions and beds for household pets, bottle stoppers, coat hangers and racks, furniture and mirrors all adorned with basketball themes, which are presumably identical to the applicant’s goods.
What’s more, where the marks of the respective parties are virtually identical, 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 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, 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.
The wording “roller shades for windows with suction cups” 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 (e.g. “roller shades for interior windows with suction cups”). See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Furthermore, where noted below, applicant must 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.
Finally, the identified “plastic name badges” are classified incorrectly. Applicant must amend the application to classify the goods in International Class 16. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The applicant may adopt any or all of the following descriptions, if accurate:
“Plastic name badges”, in International Class 16; and/or
“Toy boxes and chests; pillows and seat cushions; portable and folding stadium seats and cushions; plastic key tags; picture frames; hand-held mirrors; roller shades for interior windows with suction cups; caddies in the nature of magazine racks; wall plaques made of wood; wall plaques made of plastic; soft sculpture wall decorations; non-metal reusable bottle caps; non-metal clips for tablecloths; wooden signboards; decorative mobiles; steel furniture; recliners, chairs and stools; tables; portable and folding sports seats and stools; furniture; juvenile furniture; bedroom furniture; clothes hangers and coat hangers; non-metal trophy cups; bean bag chairs; non-metal coat racks; non-metal stands for holding and displaying various types of balls; dividers for drawers; plastic figurines; plastic pet identification tags; wood boxes; furniture chests; gift package decorations made of plastic; plastic novelty license plates; non-metal name plates; figurines of plastic in the nature of garden gnomes; pillows and beds for household pets”, in International Class 20.
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).
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).
(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