To: | Tom Kim (p@moradianlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88511882 - TRUINK - N/A |
Sent: | September 11, 2019 01:15:20 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88511882
Mark: TRUINK
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Correspondence Address:
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Applicant: Tom Kim
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Reference/Docket No. N/A
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 11, 2019
SUMMARY OF ISSUES
· Section 2(d) Refusal – Likelihood of Confusion
· Identification and Classification of Goods – Required
· Multiple Class Application Requirements
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. 4390843. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant’s mark is TRUINK (in standard characters) for “Nano material-based ink that changes color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and/or inserts to verify that a product is authentic, the product including one or more of apparel such as shoes, bags, wallets, dresses, or electronics such as computers, smart phones, headphones, watches, and other products such as cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches. A tag, label, or bar code that changes color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and/or inserts to verify that a product is authentic, the product including one or more of apparel such as shoes, bags, wallets, dresses, or electronics such as computers, smart phones, headphones, watches, and other products such as cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches. A tag, label, bar code or ink that changes color due to the presence of a magnet”.
The registrant’s mark is TRUEPRESS INK (in standard characters) for “ink jet printer ink” in International Class 2.
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, applicant’s mark is TRUINK and registrant’s mark is TRUEPRESS INK. As shown, both marks contain the phonetic equivalent words TRUE and INK. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Therefore, because both marks contain the similar terms TRUE and INK, the marks are considered similar.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Therefore, the marks are considered similar for likelihood of confusion purposes.
Similarity of the Goods
In this case, the registration uses broad wording to describe ink jet printer ink, which presumably encompasses all goods of the type described, including applicant’s more narrow, “Nano material-based ink that changes color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and/or inserts to verify that a product is authentic, the product including one or more of apparel such as shoes, bags, wallets, dresses, or electronics such as computers, smart phones, headphones, watches, and other products such as cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches. A tag, label, or bar code that changes color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and/or inserts to verify that a product is authentic, the product including one or more of apparel such as shoes, bags, wallets, dresses, or electronics such as computers, smart phones, headphones, watches, and other products such as cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches. A tag, label, bar code or ink that changes color due to the presence of a magnet”. 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 registrant’s 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 registrant’s goods are related.
IDENTIFICATION AND CLASSIFICATION OF GOODS – REQUIRED
Applicant must clarify some of the wording in the identification of goods because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Additionally, some of the goods appear to be misclassified.
An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” and “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” and “or” deleted and the goods specified using definite and unambiguous language. See suggested amended wording below.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods. If there is wording in the applicant’s version of the identification of goods which should be removed, it
will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should
enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 1: Nano material-based ink that changes color upon placement of a magnet or magnetic field, which can
be directly printed on products, packaging, and/or inserts to verify that a product is authentic, the product including one or more of apparel such as shoes, bags, wallets, dresses, or electronics
such as computers, smart phones, headphones, watches, and other products such as cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches. A tag, label, or bar code
that changes color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and/or inserts to verify that a product is authentic, the product including one
or more of apparel such as shoes, bags, wallets, dresses, or electronics such as computers, smart phones, headphones, watches, and other products such as cosmetics, perfumes, fabric, glasses,
jewelry, vape pens, pharmaceutical drugs, and watches. A tag, label, bar code or ink that changes color due to the presence of a magnet
Class 2: Nano material-based ink that changes color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and inserts to verify that a product is authentic, the products being shoes, bags, wallets, dresses, and electronics namely, computers, smart phones, headphones, watches, and other products namely, cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches; ink that changes color due to the presence of a magnet
Class 9: Electronic tags for goods that change color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and inserts to verify that a product is authentic, the products being shoes, bags, wallets, dresses, electronics, namely, computers, smart phones, headphones, watches, and other products, namely, cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches; encoded bar code labels for goods that change color upon placement of a magnet or magnetic field, which can be directly printed on products, packaging, and inserts to verify that a product is authentic, the products being shoes, bags, wallets, dresses, electronics, namely, computers, smart phones, headphones, watches, and other products, namely, cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches; electronic tags for goods that change color due to the presence of a magnet
Class 16: A tag, namely, _____ {indicate specific type of tag, e.g., price tag, paper hang tag, cardboard hang tag}, and bar code labels that change color upon placement of magnet or magnetic field, to verify that a product is authentic, the products being shoes, bags, wallets, dresses, electronics, namely, computers, smart phones, headphones, watches, and other products, namely, cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches; price tags that change color due to the presence of a magnet; bar code labels that change color due to the presence of a magnet
Class 20: plastic hang tags, plastic labels, and plastic bar code labels for goods that change color upon placement of a magnet or magnetic field to verify that a product is authentic, the products being shoes, bags, wallets, dresses, electronics, namely, computers, smart phones, headphones, watches, and other products, namely, cosmetics, perfumes, fabric, glasses, jewelry, vape pens, pharmaceutical drugs, and watches; plastic hang tags for goods that change color due to the presence of a magnet; plastic labels and plastic bar code labels that change color due to the presence of a magnet
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENTS
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
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. 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
Megan Aurand
/Megan Aurand/
Examining Attorney
Law Office 128
(571) 272-1614
megan.aurand@uspto.gov
RESPONSE GUIDANCE