Offc Action Outgoing

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:  September 17, 2019

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Prior Pending Applications Advisory
• Representative Specimens Required
• Mark Description Amendments Required

 

SECTION 2(d) 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. 1977819, 2719230, and 5788211.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is MM (design plus words) for “Eyepatches for medical use; Medicated balms for treatment of lips; Skin lubricants for athletes to prevent skin chafing; Glucose for use as an additive to foods for medical purposes; Medicated throat sprays; Antibiotic tablets; Enzyme food supplements; Antibiotic ointments; Scapulars for surgical purposes; Saline solution for medical purposes; Nail sanitizing preparations; Disposable wipes impregnated with disinfecting chemicals or compounds therefor for use in hospitals, homes, outdoor; Disinfectants for medical instruments; Sports cream for relief of pain; Disinfectants for contact lenses; Glycerine for medical purposes; Mentholated ointment for medical use; Dietary food supplements; Ibuprofen for use as an oral analgesic; Medical cleansers for skin and wounds; Paracetamol; Cotton swabs for medical use; Artificial tears; Surgical glues; Moleskin for use as a medical bandage; Hemorrhoid preparations; Wadding for medical purposes; Medicines for alleviating constipation; Solutions for contact lenses; Hemostatic pencils; First-aid boxes, filled; Deodorants for clothing and textiles; Disinfectants; Nail fungus treatment preparations; pH test strips, namely, test strips for use in measuring the pH level in human bodies for purposes of determining levels of alkalinity in the body; Medical hemostatic paste; Local anaesthetics; Sterilized dressing; Sexual stimulant preparations in the form of gels containing organic ingredients, inorganic ingredients and fragrances; Kits comprised primarily of sanitizer gel and disinfecting wipes and also including sanitary masks, plastic gloves and hand cream used for germ prevention; Hemorrhoidal ointments; Pharmaceutical preparations for treating sunburn; Spermicides; Anti-inflammatory sprays; Anti-inflammatory gels; Anti-inflammatory salves; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Liquid nutritional supplement; Preparations for repelling animals, birds and insects; Pharmaceutical preparations for skin care; Vitamin supplements; Sterilising preparations; Sanitary towels; Adhesive tapes for medical purposes; Balms for medical purposes; Herbs for medicinal purposes; Disinfectants for hygiene purposes; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Laxatives; Powdered fruit-flavored dietary supplement drink mix; Saline wash for medical purposes; Allergy tablets; Allergy medications; Hand-sanitizing preparations; Bandages impregnated with antibiotic substances; Allergy capsules; Eye patches for medical purposes; Aloe vera gel for therapeutic purposes; First aid kits; Contact lens disinfectants; Burn dressings; Alcohol for topical use; Cotton for medical purposes; Preparations for repelling insects; Iodine; Antibacterial hand lotions; Electrolyte replacement solutions; Hydrogen peroxide for medical use; Hydrocortisone cream; Dietary supplements for human consumption; Dietary and nutritional supplements; Headache treatment preparations; Anti-drowsiness treatment preparations; Sanitary sterilizing preparations; Wound dressings, namely, pledgets; Topical first aid gel; Nasal spray preparations; Medicated sun care preparations; Dissolvable strips to stop bleeding from minor cuts and grazes; Anti-adhesion gels for use with wound drainage devices; Medicated brush-on oral care gels; Mixed antibiotic preparations; Menstruation tampons; Local anesthetics; Medicated sunburn lotions; Insect-repellents; Gauze; Medicinal creams for skin care; Respiratory stimulants; Preparations for cleansing the skin for medical use; Pharmaceutical preparations for wounds; Self adhesive dressings; Sanitary preparations for medical use; Cleansing solutions for medical use; Orgasm creams; Bandages for dressings; Anti-cough drops; Antibacterial substances for medical purposes; Antiallergic medicines; Cardiovascular agents for medical purposes; Hemostatics for medical purposes; Anti-inflammatory ointments; Activated charcoal used as an antidote to poisons; Rubbing alcohol; Contact lens wetting solutions; General anesthetics; Gauze for dressings; Moleskin for medical purposes; Dressings for wounds and burns; Anticoagulants; Eye drops; Antacids; Diuretics; Pre-moistened medicated wipes; Pre-moistened medicated towelettes; Electrolyte drinks for medical purposes; Antiseptic wipes; Medicated pre-moistened wipes; Medical lubricant, namely, vaginal lubricants; Acetaminophen; Decongestants; Antihistamines; Wound dressings; Topical preparations, namely, gels and creams for enhancing sexual arousal; Sexual stimulant gels; Edible fish oils for medical purposes; Medicated lip balm; Anti-itch cream; Medicated foot powder; Antibacterial handwash; Medicated compresses; Medical adhesives for binding wounds; Insect repellents; Pharmaceutical preparations, namely, anticoagulants; Petroleum jelly for medical purposes; Glucose dietary supplements; Alcohol for pharmaceutical purposes; Concentrated saline capsules for sinus and nasal irrigation; Irrigating solutions for eye use; Hydrocortisone; Motion sickness treatment preparations; Fever blister treatment preparations; Anti-inflammatories; Antiflatulants; Diarrhea medication; Decongestant nasal sprays; Allergy relief medication; Adhesive bandages; Burn relief medication; Solutions for use with contact lenses; Bandages for skin wounds; Athletes' foot preparations; Personal lubricants; Athletes' foot powders; Pain relief medication; Adhesive for bandages for skin wounds; Cough lozenges; Throat lozenges; Surgical bandages; Cough drops; Eye pads for medical use; Glucose for medical purposes; Adhesive bands for medical purposes; Bicarbonate of soda for pharmaceutical purposes; Muscle relaxants; Medical and surgical dressings; Wadding for dressings; Surgical dressings; Oral rehydration salts; Antibiotic creams; Antibacterial hand soaps; Medicated eye washes; Sterilizing preparations; Liquid bandage sprays; Antibacterial waterless soap; Ear drops; Anti-friction skin preparations for preventing blisters; Anti-friction skin preparations for preventing chafing; Medical dressings; Sanitizing wipes; Nose drops; Cold sore treatment preparations; Medical adhesive tape; Medicated sunburn ointments; Disinfecting wipes; Surgical tape; Medical adhesive strips for closing wounds or incisions; Saline solution for sinus and nasal irrigation; Electrolytes for medical use” in Class 5

 

The registered marks are:

 

• U.S. Registration No. 1977819 2 MM for “surgical bandages, chemically treated papers for use in the detection of fecal occult blood, cotton for medical purposes, cotton sticks for medical purposes, cotton swabs for medical purposes, diagnostic preparations or reagents for clinical or medical laboratory use, douches, dressings (wound, burn and surgical), gauze, medical adhesive tape, surgical bandages and dressings, and medicated pre-moistened wipes” in Class 5
• U.S. Registration No. 2719230 MM SPORTS NUTRITION (design plus words) for “Nutritional Supplements” in Class 5.
• U.S. Registration No. 5788211 MM (design plus words) for “Gels for use as a personal lubricant” in Class 5.

 

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 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.  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.

 

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 this case, the applied for mark is MM (design plus words).

 

The registered marks are 2 MM, MM SPORTS NUTRITION (design plus words), and MM (design plus words).  These marks are all similar.

 

Specifically, the marks all share the identical wording MM.  This appears to have no specific meaning in connection with the goods. See http://www.merriam-webster.com/dictionary/mm (showing MM to mean “measures” or “millimeter”).  Therefore the marks all share a literal element that is identical in sound and appearance and does not differ in meaning.

 

The registered marks contain additional wording, the number “2” (in U.S. Registration No. 1977819) and “SPORTS NUTRITION” (in U.S. Registration No. 2719230).

 

First, “2” means “being one more than one in number”. See http://www.merriam-webster.com/dictionary/two.  Nothing about this digit alters the meaning or commercial impression of the shared lettering.  Therefore, this does not alter the overall similarity.

 

U.S. Registration No. 2719230 contains the additional wording “SPORTS NUTRITION” which has been disclaimed.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

SPORTS NUTRITION is commonly used on supplements for athletes.  See http://www.nowfoods.com/sports-nutrition; http://my.clevelandclinic.org/health/drugs/17894-sports-nutrition-supplements (discussing sports nutrition supplements).

 

Therefore, consumers are less likely to focus on this portion of the mark, rendering MM the dominant portion of that mark.

 

The applied-for mark and registered marks all have design elements.  However, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

First, the design in the applied-for mark is of a rotated Greek cross.  As noted by applicant in the mark description, this cross is used as a first aid symbol.  See http://en.wikipedia.org/wiki/First_aid_kit (discussing first aid kit symbols).  Therefore, this design does not alter the similarity based on the shared literal elements.

 

The mark in U.S. Registration No. 2719230 is the design of a stylized head of a person.  Nothing about this design alters the meaning or impression of the wording “MM”.  Therefore, this design does not alter the similarity based on a similar literal element.

 

The mark in U.S. Registration No. 5788211 is of a circle.  Therefore, this stylizes the similar literal element and does not alter the overall similarity.

 

Therefore, these marks are confusingly similar.

 

Relatedness of the Goods

 

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).  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] 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).

 

Here, applicant has applied for a very wide range of goods in Class 5:

 

Eyepatches for medical use; Medicated balms for treatment of lips; Skin lubricants for athletes to prevent skin chafing; Glucose for use as an additive to foods for medical purposes; Medicated throat sprays; Antibiotic tablets; Enzyme food supplements; Antibiotic ointments; Scapulars for surgical purposes; Saline solution for medical purposes; Nail sanitizing preparations; Disposable wipes impregnated with disinfecting chemicals or compounds therefor for use in hospitals, homes, outdoor; Disinfectants for medical instruments; Sports cream for relief of pain; Disinfectants for contact lenses; Glycerine for medical purposes; Mentholated ointment for medical use; Dietary food supplements; Ibuprofen for use as an oral analgesic; Medical cleansers for skin and wounds; Paracetamol; Cotton swabs for medical use; Artificial tears; Surgical glues; Moleskin for use as a medical bandage; Hemorrhoid preparations; Wadding for medical purposes; Medicines for alleviating constipation; Solutions for contact lenses; Hemostatic pencils; First-aid boxes, filled; Deodorants for clothing and textiles; Disinfectants; Nail fungus treatment preparations; pH test strips, namely, test strips for use in measuring the pH level in human bodies for purposes of determining levels of alkalinity in the body; Medical hemostatic paste; Local anaesthetics; Sterilized dressing; Sexual stimulant preparations in the form of gels containing organic ingredients, inorganic ingredients and fragrances; Kits comprised primarily of sanitizer gel and disinfecting wipes and also including sanitary masks, plastic gloves and hand cream used for germ prevention; Hemorrhoidal ointments; Pharmaceutical preparations for treating sunburn; Spermicides; Anti-inflammatory sprays; Anti-inflammatory gels; Anti-inflammatory salves; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Liquid nutritional supplement; Preparations for repelling animals, birds and insects; Pharmaceutical preparations for skin care; Vitamin supplements; Sterilising preparations; Sanitary towels; Adhesive tapes for medical purposes; Balms for medical purposes; Herbs for medicinal purposes; Disinfectants for hygiene purposes; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Laxatives; Powdered fruit-flavored dietary supplement drink mix; Saline wash for medical purposes; Allergy tablets; Allergy medications; Hand-sanitizing preparations; Bandages impregnated with antibiotic substances; Allergy capsules; Eye patches for medical purposes; Aloe vera gel for therapeutic purposes; First aid kits; Contact lens disinfectants; Burn dressings; Alcohol for topical use; Cotton for medical purposes; Preparations for repelling insects; Iodine; Antibacterial hand lotions; Electrolyte replacement solutions; Hydrogen peroxide for medical use; Hydrocortisone cream; Dietary supplements for human consumption; Dietary and nutritional supplements; Headache treatment preparations; Anti-drowsiness treatment preparations; Sanitary sterilizing preparations; Wound dressings, namely, pledgets; Topical first aid gel; Nasal spray preparations; Medicated sun care preparations; Dissolvable strips to stop bleeding from minor cuts and grazes; Anti-adhesion gels for use with wound drainage devices; Medicated brush-on oral care gels; Mixed antibiotic preparations; Menstruation tampons; Local anesthetics; Medicated sunburn lotions; Insect-repellents; Gauze; Medicinal creams for skin care; Respiratory stimulants; Preparations for cleansing the skin for medical use; Pharmaceutical preparations for wounds; Self adhesive dressings; Sanitary preparations for medical use; Cleansing solutions for medical use; Orgasm creams; Bandages for dressings; Anti-cough drops; Antibacterial substances for medical purposes; Antiallergic medicines; Cardiovascular agents for medical purposes; Hemostatics for medical purposes; Anti-inflammatory ointments; Activated charcoal used as an antidote to poisons; Rubbing alcohol; Contact lens wetting solutions; General anesthetics; Gauze for dressings; Moleskin for medical purposes; Dressings for wounds and burns; Anticoagulants; Eye drops; Antacids; Diuretics; Pre-moistened medicated wipes; Pre-moistened medicated towelettes; Electrolyte drinks for medical purposes; Antiseptic wipes; Medicated pre-moistened wipes; Medical lubricant, namely, vaginal lubricants; Acetaminophen; Decongestants; Antihistamines; Wound dressings; Topical preparations, namely, gels and creams for enhancing sexual arousal; Sexual stimulant gels; Edible fish oils for medical purposes; Medicated lip balm; Anti-itch cream; Medicated foot powder; Antibacterial handwash; Medicated compresses; Medical adhesives for binding wounds; Insect repellents; Pharmaceutical preparations, namely, anticoagulants; Petroleum jelly for medical purposes; Glucose dietary supplements; Alcohol for pharmaceutical purposes; Concentrated saline capsules for sinus and nasal irrigation; Irrigating solutions for eye use; Hydrocortisone; Motion sickness treatment preparations; Fever blister treatment preparations; Anti-inflammatories; Antiflatulants; Diarrhea medication; Decongestant nasal sprays; Allergy relief medication; Adhesive bandages; Burn relief medication; Solutions for use with contact lenses; Bandages for skin wounds; Athletes' foot preparations; Personal lubricants; Athletes' foot powders; Pain relief medication; Adhesive for bandages for skin wounds; Cough lozenges; Throat lozenges; Surgical bandages; Cough drops; Eye pads for medical use; Glucose for medical purposes; Adhesive bands for medical purposes; Bicarbonate of soda for pharmaceutical purposes; Muscle relaxants; Medical and surgical dressings; Wadding for dressings; Surgical dressings; Oral rehydration salts; Antibiotic creams; Antibacterial hand soaps; Medicated eye washes; Sterilizing preparations; Liquid bandage sprays; Antibacterial waterless soap; Ear drops; Anti-friction skin preparations for preventing blisters; Anti-friction skin preparations for preventing chafing; Medical dressings; Sanitizing wipes; Nose drops; Cold sore treatment preparations; Medical adhesive tape; Medicated sunburn ointments; Disinfecting wipes; Surgical tape; Medical adhesive strips for closing wounds or incisions; Saline solution for sinus and nasal irrigation; Electrolytes for medical use.”

 

The goods in U.S. Registration No. 1977819 are “surgical bandages, chemically treated papers for use in the detection of fecal occult blood, cotton for medical purposes, cotton sticks for medical purposes, cotton swabs for medical purposes, diagnostic preparations or reagents for clinical or medical laboratory use, douches, dressings (wound, burn and surgical), gauze, medical adhesive tape, surgical bandages and dressings, and medicated pre-moistened wipes” in Class 5.

 

These goods overlap the applicant’s broadly-defined goods and registrant’s bandages and must of applicant’s goods are commonly found together in first aid kits.  See http://www.redcross.org/get-help/how-to-prepare-for-emergencies/anatomy-of-a-first-aid-kit.html; http://www.mayoclinic.org/first-aid/first-aid-kits/basics/art-20056673; http://www.northernsafety.com/safety/first-aid/first-aid-kits-supplies  (showing the supplies in a first aid kit).  Therefore, these goods are used together and so are related.

 

The goods in U.S. Registration No. 2719230 are “Nutritional Supplements”.  These overlap the applicant’s goods “Enzyme food supplements; Dietary food supplements; Vitamin supplements; Powdered fruit-flavored dietary supplement drink mix; Dietary supplements for human consumption; Dietary and nutritional supplements” among others.  Therefore, these goods are related.

The goods in U.S. Registration No. 5788211 are “Gels for use as a personal lubricant”.  These overlap the goods “Medical lubricant, namely, vaginal lubricants” and “Personal lubricants” in Class 5.

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe its wide variety of goods in Class 5, which presumably encompasses all goods of the type described, including registrants’ more narrow goods.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrants’ goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, applicant’s and registrants’ goods are related.

 

Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks.  Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

            Response to Section 2(d) Refusal – 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.

 

PRIOR PENDING APPLICATIONS ADVISORY

 

The filing dates of pending U.S. Application Serial Nos. 86550838 and 88444960 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

However, to avoid abandonment, applicant must respond to the Section 2(d) Refusal above and Requirements below.

 

REQUIREMENTS

 

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

 

REPRESENTATIVE SPECIMENS REQUIRED

 

Applicant has applied for a multitude of goods in International Class 5.  Note that if an identification is so broad that it encompasses a wide range of products and services, the applicant must submit evidence that it actually uses the mark on a wide range of products to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.

 

Here, applicant has submitted what appears to be an image of a first aid kit.  This is acceptable for the following goods:

 

Class 5:           First aid kits; First-aid boxes, filled;

 

Applicant must submit a proper specimen for each of the following groups of goods (please note, applicant has applied for such an expansive list of goods, that the groupings here are not exclusive, however, applicant must demonstrate that it generally offers all types of these multitude of goods in order to be allowed registration for this expansive list):

 

1.     Eyepatches for medical use; Eye patches for medical purposes; Eye pads for medical use;

2.     Medicated balms for treatment of lips; Balms for medical purposes; Skin lubricants for athletes to prevent skin chafing; Sports cream for relief of pain; Mentholated ointment for medical use; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Aloe vera gel for therapeutic purposes; Medical cleansers for skin and wounds; Hydrocortisone cream; Anti-inflammatory ointments; Medicated lip balm; Anti-friction skin preparations for preventing blisters; Anti-friction skin preparations for preventing chafing;

3.      Glucose for use as an additive to foods for medical purposes; Glucose dietary supplements; Glucose for medical purposes;

4.     Medicated throat sprays;

5.     Antibiotic tablets; Antibiotic ointments; Antibacterial substances for medical purposes; Antibiotic creams;

6.     Enzyme food supplements; Dietary food supplements; Liquid nutritional supplement; Vitamin supplements; Powdered fruit-flavored dietary supplement drink mix; Dietary supplements for human consumption; Dietary and nutritional supplements;

7.     Scapulars for surgical purposes;

8.     Saline solution for medical purposes;

9.     Nail sanitizing preparations;

10.  Disposable wipes impregnated with disinfecting chemicals or compounds therefor for use in hospitals, homes, outdoor; Disinfectants for medical instruments; Disinfectants; Kits comprised primarily of sanitizer gel and disinfecting wipes and also including sanitary masks, plastic gloves and hand cream used for germ prevention; Disinfectants for hygiene purposes;  Rubbing alcohol; Disinfecting wipes;

11.  Hand-sanitizing preparations; Antibacterial hand lotions; Antibacterial handwash; Antibacterial hand soaps;

12.  Sanitary sterilizing preparations; Topical first aid gel; Mixed antibiotic preparations; Medicinal creams for skin care; Preparations for cleansing the skin for medical use; Pharmaceutical preparations for wounds; Cleansing solutions for medical use; Sanitary preparations for medical use; Pre-moistened medicated wipes; Pre-moistened medicated towelettes; Burn relief medication; Sanitizing wipes;

13.  Disinfectants for contact lenses;  Artificial tears; Solutions for contact lenses; Contact lens disinfectants; Contact lens wetting solutions; Eye drops; Irrigating solutions for eye use; Solutions for use with contact lenses; Medicated eye washes;

14.  Glycerine for medical purposes;

15.  Ibuprofen for use as an oral analgesic; Paracetamol; Local anaesthetics; Headache treatment preparations; Local anesthetics; Acetaminophen; Pain relief medication;

16.  Cotton swabs for medical use;

17.  Surgical glues;

18.  Moleskin for use as a medical bandage; Wadding for medical purposes; Sterilized dressing; Sterilising preparations; Adhesive tapes for medical purposes; Bandages impregnated with antibiotic substances; Burn dressings; Cotton for medical purposes; Wound dressings, namely, pledgets; Dissolvable strips to stop bleeding from minor cuts and grazes; Anti-adhesion gels for use with wound drainage devices; Gauze; Self adhesive dressings; Bandages for dressings; Gauze for dressings; Moleskin for medical purposes; Dressings for wounds and burns; Wound dressings; Medicated compresses; Medical adhesives for binding wounds; Adhesive bandages; Bandages for skin wounds; Adhesive for bandages for skin wounds; Surgical bandages; Adhesive bands for medical purposes; Medical and surgical dressings; Wadding for dressings; Surgical dressings; Sterilizing preparations; Medical dressings; Medical adhesive tape; Surgical tape; Medical adhesive strips for closing wounds or incisions;

19.  Hemorrhoid preparations; Medicines for alleviating constipation; Hemorrhoidal ointments; Laxatives

20.  Hemostatic pencils; Medical hemostatic paste;

21.  Deodorants for clothing and textiles;

22.  Nail fungus treatment preparations;

23.   pH test strips, namely, test strips for use in measuring the pH level in human bodies for purposes of determining levels of alkalinity in the body;

24.  Sexual stimulant preparations in the form of gels containing organic ingredients, inorganic ingredients and fragrances; Spermicides;

25.  Pharmaceutical preparations for treating sunburn; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Pharmaceutical preparations for skin care; Medicated sun care preparations; Medicated sunburn lotions; Hydrocortisone; Medicated sunburn ointments;  

26.  Anti-inflammatory sprays; Anti-inflammatory gels; Anti-inflammatory salves; Anti-inflammatories;

27.  Preparations for repelling animals, birds and insects; Preparations for repelling insects; Insect-repellents; Insect repellents;

28.  Sanitary towels; Menstruation tampons;

29.  Herbs for medicinal purposes;

30.  Saline wash for medical purposes;

31.  Allergy tablets; Allergy medications; Allergy capsules;  Nasal spray preparations; Antiallergic medicines; Antihistamines; Allergy relief medication; Saline solution for sinus and nasal irrigation; Concentrated saline capsules for sinus and nasal irrigation; Decongestant nasal sprays;

32.  Alcohol for topical use; Iodine; Hydrogen peroxide for medical use;

33.  Electrolyte replacement solutions; Electrolyte drinks for medical purposes; Electrolytes for medical use

34.  Anti-drowsiness treatment preparations;

35.  Medicated brush-on oral care gels

36.  Respiratory stimulants;

37.   Orgasm creams; Medical lubricant, namely, vaginal lubricants; Personal lubricants; Topical preparations, namely, gels and creams for enhancing sexual arousal; Sexual stimulant gels;

38.  Anti-cough drops; Cough lozenges; Throat lozenges; Cough drops;

39.  Cardiovascular agents for medical purposes;

40.  Hemostatics for medical purposes;

41.  Activated charcoal used as an antidote to poisons;

42.  General anesthetics;

43.  Anticoagulants; Pharmaceutical preparations, namely, anticoagulants;

44.  Antacids; Bicarbonate of soda for pharmaceutical purposes;

45.  Diuretics;

46.  Decongestants;

47.  Edible fish oils for medical purposes;

48.  Anti-itch cream; Medicated foot powder; Athletes' foot preparations; Athletes' foot powders;

49.  Petroleum jelly for medical purposes;

50.  Alcohol for pharmaceutical purposes;

51.  Motion sickness treatment preparations;

52.  Fever blister treatment preparations;

53.  Antiflatulants; Diarrhea medication;

54.  Muscle relaxants;

55.  Oral rehydration salts; Liquid bandage sprays; Antibacterial waterless soap;

56.  Ear drops;

57.  Nose drops;

58.  Cold sore treatment preparations;

 

If applicant is unable to provide specimens to support use of these items, applicant must delete these entries. If this filing is based on Section 1(a), applicant amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b).  This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date. 

 

Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

MARK DESCRIPTION AMENDMENT REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Specifically, the mark description does not include that the cross is rotated so it appears as a letter “X”.

 

The following description is suggested, if accurate: 

 

The mark consists of the letters “MM” in a stylized font with the bottoms of the letters slanting in toward the center.  Below the letters is a shaded diamond containing a rotated Greek cross, so it resembles an “X”.  The design is surrounded by an outline of a shield or pentagon with straight sides that comes to a point at the bottom.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about 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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 September 17, 2019 for

U.S. Trademark Application Serial No. 88476290

 

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. 

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 17, 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.”