Offc Action Outgoing

EPREDIA

New Erie Scientific LLC

U.S. Trademark Application Serial No. 88473846 - EPREDIA - TM19-073

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
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United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 88473846

 

Mark:  EPREDIA

 

 

 

 

Correspondence Address: 

ROBYN A. SHELTON

COHEN & GRIGSBY, P.C.

625 LIBERTY AVENUE

PITTSBURGH, PA 15222-3152

 

 

 

Applicant:  New Erie Scientific LLC

 

 

 

Reference/Docket No. TM19-073

 

Correspondence Email Address: 

 iptrademark@cohenlaw.com

 

 

 

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:  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.

 

SUMMARY OF ISSUES:

  • Section 2(d) Refusal
  • Identification Indefinite – Amendment Required
  • Clarification of the Number of Classes for Which Registration is Sought
  • Translation Statement Required

 

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.

 

            Similarity of the Marks

 

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 a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

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

 

The goods and/or 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).

 

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.

 

The compared goods and/or 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).

 

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

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(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

 

The identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark EPREDIA.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “EPREDIA” in the mark is “PROPERLY”.  TMEP §809.03.  See attached translation evidence.

 

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

 

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. 

 

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

  • 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.  

 

 

 

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U.S. Trademark Application Serial No. 88473846 - EPREDIA - TM19-073

To: New Erie Scientific LLC (iptrademark@cohenlaw.com)
Subject: U.S. Trademark Application Serial No. 88473846 - EPREDIA - TM19-073
Sent: September 06, 2019 02:37:52 PM
Sent As: ecom113@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 06, 2019 for

U.S. Trademark Application Serial No. 88473846

 

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. 

 

 

/Schmidt, John/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7082

john.schmidt@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 September 06, 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.”

 

 

 


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