Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  March 20, 2020

 

This letter confirms applicant’s response filed February 28, 2020.  The requirement to properly amend the identification of goods has been satisfied.  In addition, applicant’s voluntary claim of ownership of prior registrations has been noted and made of record.  Finally, counsel’s bar membership information has been noted for the record.

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

Application suspended until disposition of cited registration.  Registration maintenance documents are or were due to be filed for U.S. Registration Nos. 4483077, the registration cited against applicant in a refusal based on Trademark Act Section 2(d).  15 U.S.C. §1052(d).  If the maintenance documents are not timely filed and accepted by the USPTO, the cited registration will cancel and/or expire and will no longer bar registration of applicant’s mark under Section 2(d).  See 15 U.S.C. §§1058, 1059, 1141k.  Action on this application is suspended for six months to await disposition of the cited registration; after which, the trademark examining attorney will determine whether to maintain or withdraw the Section 2(d) refusal.  See 37 C.F.R. §2.67; TMEP §716.02(e). 

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

Outstanding Refusal - Likelihood of Confusion

Initially, the examiner notes that applicant’s response does not contain any arguments regarding the similarity of the marks, as they are virtually identical.  Therefore, the only issue to be resolved is whether the goods of the parties are related enough to cause confusion.

Turning to the relationship between the parties’ goods, applicant contends they are unrelated based on its recent amendment to the identification of goods indicating “all of the foregoing to promote the sport of basketball”.  However, the compared 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).  Rather, 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). 

Furthermore, the fact that the goods of the parties may differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. 

In addition, 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).  

In this case, applicant’s goods are identified as follows:   

“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 nameplates; figurines of plastic in the nature of garden gnomes; pillows and beds for household pets; all of the foregoing to promote the sport of basketball”, in International Class 20. 

Registrant’s goods are identified, in relevant part, as follows:   

“Key rings, trinkets, or fobs of precious metal”, in International Class 14; and

“Decorations of plastic for foodstuffs; 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; hampers in the nature of baskets for transporting goods for commercial purposes; 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; book rests in the nature of furniture”, in International Class 20. 

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 use broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including all of the aforementioned registered goods for promoting the sport of basketball and sold in various sports venues, concessions stands and stadiums, which are identical and undeniably commercially-related to the applicant’s goods.

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 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, the refusal to register under Trademark Act Section 2(d) based on a likelihood of confusion with the registered mark ROCKET in U.S. Registration Nos. 4483077 is maintained and continued.

Miscellaneous

If applicant’s attorney has questions about this application or needs further assistance, please telephone the assigned trademark examining attorney directly at the number below.

Advisory Regarding E-mail Communications

If applicant’s attorney 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.

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 20, 2020 for

U.S. Trademark Application Serial No. 88461976

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(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).

 

 

 

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.”