To: | New Erie Scientific LLC (iptrademark@cohenlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88473846 - EPREDIA - TM19-073 |
Sent: | September 06, 2019 02:37:51 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88473846
Mark: EPREDIA
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Correspondence Address:
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Applicant: New Erie Scientific LLC
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Reference/Docket No. TM19-073
Correspondence Email Address: |
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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: September 06, 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.
SECTION 2(D) REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5552184 and 86247692. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Standard of Analysis for Section 2(d) Refusal
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.
Facts
Applicant has applied to register the mark “EPREDIA” for use on, in relevant part, “nonmedical hand cream; soaps; detergents” in International Class 03 and “antibacterial handwash; sanitary substances, namely, soap, hand cream, disinfectants” in International Class 05.
U.S. Registration No. 5552184 for the mark “PREDIA” is used in connection with “dietary and nutritional supplements” in International Class 05.
U.S. Registration No. 86247692 for the mark “PREDIA” is used in connection with, in relevant part, “cosmetics; perfumes; cosmetic soaps; cotton wool for cosmetic purposes and hair care preparations” in International Class 03.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. 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)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the present case, applicant’s mark and registrant’s mark contain the element “PREDIA” and this element will be pronounced and displayed identically in all the marks.
Even though applicant’s mark begins with the letter “E”, this does not obviate the similarities between the marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Therefore, the marks are confusingly similar.
Relatedness of Goods/Services
Applicant identifies, in relevant part, “nonmedical hand cream; soaps; detergents” in International Class 03 and “antibacterial handwash; sanitary substances, namely, soap, hand cream, disinfectants” in International Class 05.
U.S. Registration No. 5552184 identifies “dietary and nutritional supplements” in International Class 05.
U.S. Registration No. 86247692 identifies, in relevant part, “cosmetics; perfumes; cosmetic soaps; cotton wool for cosmetic purposes and hair care preparations” in International Class 03.
Applicant’s goods are related to registrant’s goods because applicant identifies soaps and detergents and these goods include all manner of soaps and medical detergents and sanitary substances, including the cosmetic soaps of registrant.
Further, registrant’s supplements are related to applicant’s handwashes and related goods because such goods are commonly found in the same channels of trade. See attached evidence.
Therefore, the goods of applicant and registrants are closely related.
Response to Section 2(d) Likelihood of Confusion Refusal
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
IDENTIFICATION INDEFINITE – AMENDMENT REQUIRED
Class 01
The wording “histology and cytology and haematology and microbiology supplies, namely, antibodies and detection kits therefor and reagents therefor for scientific and medical research” is indefinite and must be amended. Specifically, the word “kits” must be clarified with the components of the kit. Further, the nature of the antibodies and reagents must be specified.
The wording “laboratory products, namely, histology and cytology clearing agents, decalcifying solutions, dehydration reagents, fixative solutions, gels for specimen processing, microscope immersion oil, mounting mediums for slides, solutions used in staining, stain buffers, stain removers, stains, tissue freezing medium, tissue marking dyes, and waste neutralizing solutions” should be amended to clarify the Class 01 purpose of the goods.
Class 03
The word “soaps” is indefinite and must be amended. Applicant must clarify the type of soaps.
The wording detergents is indefinite and overly broad and must be amended. Specifically, industrial detergents are in Class 01 and other detergents are in Class 03. Applicant must specify and clarify accordingly.
Class 05
The wording “sanitary substances, namely, soap, hand cream, disinfectants” is indefinite and must be amended. Applicant must clarify the nature of these goods.
Class 09
The wording “laboratory equipment, namely, clamps and frames and connectors, tissue processors, microscope slides and storage boxes, cover glass, chamber slides and custom glass, slide and cassette storage units, slide covers, slide holders, specimen adhesive, specimen slides” is overly broad. “Storage boxes” are not a Class 09 good. Metal storage boxes are in Class 06, paper and cardboard storage boxes are in Class 16 and plastic storage boxes are in Class 20.
The wording “tissue freezing medium containers” is not a Class 09 good. See the information above.
The wording “chromatography columns” is indefinite and must be amended. Applicant must clarify the nature of these goods.
The wording “equipment for grinding, cutting and polishing, microtomes and their parts” appears to be misclassified. Machines such as this are in Class 07 with machines or possibly Class 10 if they are for medical applications.
The wording “optical instruments” is indefinite and must be amended. Applicant must clarify the nature of the optical instruments.
The wording “glassware for laboratory and scientific use” must be amended. Applicant must clarify the type of glassware.
The wording “apparatus and instruments for depositing cells or other goods on plates microscopes” must be amended. Applicant must specify the nature of the apparatus and instruments.
Class 10
The wording “glove liners for use with latex gloves” is indefinite. Applicant must specify the medical nature of the goods.
Applicant may adopt the following identification, if accurate:
Class 01 - histology and cytology and haematology and microbiology supplies, namely, detection kits containing (applicant to specify, e.g., monoclonal, etc.) antibodies and reagents therefor for scientific and medical research; laboratory products, namely, histology and cytology clearing agents, decalcifying solutions, dehydration reagents, fixative solutions, gels for specimen processing, microscope immersion oil, mounting mediums for slides, solutions used in staining, stain buffers, stain removers, stains, tissue freezing medium, tissue marking dyes, and waste neutralizing solutions for medical and scientific purposes; solvents for laboratory use, namely, acetones, ethyl alcohol, formaldehydes, isopropyl alcohol, methyl alcohol and xylenes; chemicals, namely, a granular powder for use in the clean-up of formaldehyde spills for laboratory and hospital use; adhesive bands for microtomy in the nature of specimen adhesive; cryogenic compounds for fast freezing of tissue; detergents for industrial use
Class 03 - nonmedical hand cream; (applicant to specify, e.g., bar, bath, etc.) soaps; (applicant to clarify Class 03 goods, e.g., dishwasher, etc.) detergents; abrasive pastes for microtomy
Class 05 - antibacterial handwash; detergents for medical purposes; sanitary substances, namely, (applicant to specify, e.g., disinfectant, etc.) soap, medicated hand cream, disinfectants; diagnostic reagents for clinical and medical laboratory use; histology aerosol freezing agent for clinical diagnostics
Class 06 – metal storage boxes; metal tissue freezing medium containers
Class 07 - equipment for grinding, cutting and polishing, microtomes and their parts, namely, (centrifugal grinding machines, die cutting machines, grinding and polishing machines, etc.)
Class 09 - laboratory equipment, namely, clamps and frames and connectors, tissue processors, microscope slides and storage
boxes, cover glass, chamber slides and custom glass, slide and cassette storage units, slide covers, slide holders, specimen adhesive, specimen slides; optical
lenses; apparatus and scientific instruments, namely, chromatography columns in the nature of (applicant to specify), equipment for grinding, cutting and
polishing, microtomes and their parts; accessories for microtomes, namely, instruments to insert or to color sections and samples in the nature of (applicant to specify
instruments); microtome blades and blade dispensers; optical instruments, namely, (applicant to specify, e.g., microscopes, etc.); glassware for laboratory and scientific
use, namely, (applicant to specify, e.g., beakers, etc.); histology and cytology and haematology and microbiology equipment, apparatus and supplies, namely, base molds,
cassettes, control slides, cutting board units and associated mounting pins, marking pens, containers and closures therefor for transporting biological fluids and specimens, mold release compounds,
molds, paraffin handling equipment, disposable microtome blades; tissue freezing medium containers; disposable sample chambers for use in centrifuges; funnels in the nature of laboratory equipment for use in testing samples of body fluids and parts and fittings therefor; centrifugal machines in the
nature of laboratory equipment; apparatus and instruments in the nature of (applicant to specify) for depositing cells or other goods on plates microscopes; downloadable
computer application software for medical diagnostics
Class 10 - immunostaining systems, namely, immunostaining apparatus for medical diagnostic use incorporating computer hardware and software for maintaining and analyzing the immunostaining process; glove liners for use with latex medical gloves; apparatus for medical clinical use, namely, cassettes for holding tissue specimens for processing and analysis; equipment for grinding and cutting microtomes and their parts for medical purposes in the nature of (applicant to specify, e.g., medical grinding discs, medical cutting devices, etc.);
Class 16 – cardboard storage boxes; cardboard tissue freezing medium containers
Class 20 – plastic storage boxes; plastic tissue freezing medium containers
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods and/or services that are classified in possibly NINE classes; however, applicant submitted a fee(s) sufficient for only FIVE class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services 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).
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 regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS). See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).
TRANSLATION STATEMENT REQUIRED
TEAS PLUS AND TEAS RF ADVISORY
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.
RESPONDING TO THIS OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action
/Schmidt, John/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7082
john.schmidt@uspto.gov
RESPONSE GUIDANCE