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:  October 12, 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

 

1. Earlier-Filed Application as potential bar to registration for Goods identified as Sinks
2. Likelihood of Confusion
3. Identification of Goods

 

Earlier-Filed Application as potential bar to Registration for goods identified as “Sinks”

 

With respect to the goods identified as “sinks,” Applicant is advised as follows:

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 87899337 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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 mark in the referenced application.  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.

 

Trademark Act Section 2(d) – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4,377,335; 4,641,712; and 4,924,874.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

1.     Likelihood of Confusion with Reg. No. 4,377,335

 

The following refusal is issued with respect to the goods identified as:

 

Cooking apparatus and devices, namely, barbeques and grills, barbeque grills, gas grills, barbeque smokers; electric grills, charcoal grills, portable wood pellet grills and hibachis; electric indoor and outdoor grills; Torch burners, namely, propane and butane gas torches for culinary and cooking purpose; utility lighters for lighting barbeque grills; Grill accessories, namely, warming trays, smoker boxes, charcoal grill conversion units for converting charcoal grills to electric smokers, grilling plates for cooking, searing, browning, barbecuing and grilling food; Lava rock for use in barbeque grills; sinks; electric sous-vide cookers; baking and cooking ovens, gas burners, cooking stove ranges, gas ranges, gas oven ranges, stovetops in the nature of cooking stoves, apparatus for cooking, namely, cook tops, cooking overs, and warming drawers for ovens

 

Applicant seeks registration of E ELEMENT and Design for goods that include “Cooking apparatus and devices, namely, barbeques and grills, barbeque grills, gas grills, barbeque smokers; electric grills, charcoal grills, portable wood pellet grills and hibachis; electric indoor and outdoor grills; Torch burners, namely, propane and butane gas torches for culinary and cooking purpose; utility lighters for lighting barbeque grills; Grill accessories, namely, warming trays, smoker boxes, charcoal grill conversion units for converting charcoal grills to electric smokers, grilling plates for cooking, searing, browning, barbecuing and grilling food; Lava rock for use in barbeque grills; sinks; electric sous-vide cookers; baking and cooking ovens, gas burners, cooking stove ranges, gas ranges, gas oven ranges, stovetops in the nature of cooking stoves, apparatus for cooking, namely, cook tops, cooking overs, and warming drawers for ovens.  The mark ELEMENT IQ for goods identified as “A heat sensing and heat distribution system sold as an integral component feature of convection ovens, cooking ovens, domestic cooking ovens, table top cooking ovens, and electric grills; A heat sensing and heat distribution system comprised of heating elements sold as an integral component feature of countertop microwave ovens, electric toasters, electric deep fryers, electric induction cooktops, electric frypans, electric skillets, electric food blenders, and heated electric food blenders” has been cited as a bar against registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

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).

 

The Applicant’s mark and the Registrant’s mark create similar commercial impressions because the dominant portions of the marks are identical.  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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In addition, the design of the letter “E” in the mark in this application is so highly stylized that it would be considered a design element in the mark. 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 and/or services.  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). 

 

The second issue for consideration is whether the goods of the parties are related.  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).

 

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).

 

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

In addition, as demonstrated by the following printouts, businesses that offer ovens also offer parts or components of ovens under the same brand name:

 

Kenmore

Ovens/Ranges and parts and accessories - http://www.kenmore.com/products/cooking/

 

General Electric

Ovens/Ranges and parts and accessories - http://www.geappliances.com/ge/range-stove.htm?icid=GEARkitchenflyout-range

 

Frigidaire

Ovens - http://www.frigidaire.com/?msclkid=00b720da4137160a91d07d7812c42eb4&gclid=CPDQiu7il-UCFQjmswodmGcKkQ&gclsrc=ds

Parts - http://www.partselect.com/PartSearchWizard.aspx?Brand=Frigidaire&utm_source=adcenter&utm_medium=cpc&utm_campaign=adcenter&match=e&msclkid=1604264fb16f13be9a4a7bede5d40c39&Appliance=Range

 

(See attached printouts). This attached Internet evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mar; that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use; and/or that the goods and/or services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.

 

2.     Likelihood of Confusion with respect to Reg. No. 4,641,712

 

The following refusal is issued with respect to the goods identified as electric sous-vide cookers.

 

Applicant seeks registration of E ELEMENT and Design for goods identified as electric sous-vide cookers. The mark ELEMENT in Reg. No. 4,641,712 for goods identified as “Commercial food and beverage preparation equipment, namely, electric programmable precision temperature controlled water heating equipment for use in commercial food and beverage preparation”
 has been cited as a bar against registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

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).

 

The Applicant’s mark and the Registrant’s mark create similar commercial impressions because Applicant’s mark represents an appropriation of the Registrant’s mark with the addition of the design of the letter “E.”  Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

In addition, the design of the letter “E” in the mark in this application is so highly stylized that it would be considered a design element in the mark. 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 and/or services.  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). 

 

The second issue for consideration is whether the goods of the parties are related.  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).

 

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).

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the registration(s) use(s) broad wording to describe its goods, namely, Commercial food and beverage preparation equipment, namely, electric programmable precision temperature controlled water heating equipment for use in commercial food and beverage preparation.  The Applicant’s goods are electric sous vide cookers. As demonstrated by the attached printout from Bon Appetit - http://www.bonappetit.com/story/what-is-sous-vide-cooking, sous vide is a cooking process that involves the use of temperature controlled water.  The Registrant’s goods are presumed to include all goods of the type described, which would include the Applicant’s electric sous vide cookers.  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)).

 

Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.

 

3. Likelihood of Confusion with respect to Reg. No. 4,924,874

 

The following refusal is issued with respect to the goods identified as Cooking apparatus and devices, namely, barbeques and grills, barbeque grills, gas grills, barbeque smokers; electric grills, charcoal grills, portable wood pellet grills and hibachis; electric indoor and outdoor grills; Torch burners, namely, propane and butane gas torches for culinary and cooking purpose; utility lighters for lighting barbeque grills; Grill accessories, namely, warming trays, smoker boxes, charcoal grill conversion units for converting charcoal grills to electric smokers, grilling plates for cooking, searing, browning, barbecuing and grilling food; Lava rock for use in barbeque grills in Class 11.

 

Applicant seeks registration of E ELEMENT and Design for goods that include Cooking apparatus and devices, namely, barbeques and grills, barbeque grills, gas grills, barbeque smokers; electric grills, charcoal grills, portable wood pellet grills and hibachis; electric indoor and outdoor grills; Torch burners, namely, propane and butane gas torches for culinary and cooking purpose; utility lighters for lighting barbeque grills; Grill accessories, namely, warming trays, smoker boxes, charcoal grill conversion units for converting charcoal grills to electric smokers, grilling plates for cooking, searing, browning, barbecuing and grilling food; Lava rock for use in barbeque grills. The mark ELEMENTS in Reg. No. 4,924,874 for goods identified as “Household and kitchen utensils, namely, serving scoops, spatulas, sieves, strainers, graters and kitchen tongs; containers for kitchen or household use; tableware, other than knives, forks and spoons, namely, scoops, serving forks, serving ladles and serving spoons; dinnerware; tea services being tableware; coffee services being tableware; dishes and plates; drinking glasses and mugs; bowls and tureens; cookie jars; pots; glass jars; porcelain jars; earthenware jars; sugar bowls; pepper pots; salt shakers; flower pots and vases; glassware, porcelain and earthenware, namely, drinking cups, saucers, serving bowls, and trays; decorative plaques and figurines made of glass, porcelain and earthenware” has been cited as a bar against registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

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).

 

The Applicant’s mark and the Registrant’s mark create similar commercial impressions because Applicant’s mark represents an appropriation of the Registrant’s mark with the addition of the design of the letter “E.”  Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

In addition, the design of the letter “E” in the mark in this application is so highly stylized that it would be considered a design element in the mark. 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 and/or services.  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). 

 

The second issue for consideration is whether the goods of the parties are related.  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).

 

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).

 

The following printouts demonstrate that businesses that offer grills also offer cooking equipment and utensils under the same brand name:

 

KitchenAid

Major Appliances - http://www.kitchenaid.com/major-appliances.html

Outdoor Grills - http://www.kitchenaid.com/major-appliances/grills.html

Kitchenware - http://www.kitchenaid.com/kitchenware.html

 

Weber

Grills - http://www.weber.com/US/en/home/

Accessories (Utensils, pans) - http://www.weber.com/US/en/accessories/cooking/

 

Nexgrill

Grills - http://nexgrill.com/collections/grills

Accessories (Utensils) - http://nexgrill.com/collections/accessories

 

(See attached printouts).  This attached Internet establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark and that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

In addition, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely grills and Kitchenware including utensils, pots and pans, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Inasmuch as the marks are similar and the goods are related, a likelihood of confusion exists.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods

 

The identification of goods must be clarified because certain of the wording is indefinite for purposes of registration.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following format to amend the wording at issue in the identification, if accurate:

 

“Refrigerators” is listed twice in the identification.  Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 11 for “refrigerators.”  See generally TMEP §§1402.01, 1402.01(a). 

 

“Luminaires” should be amended to “LED luminaires;” and/or “Electric luminaires” in Class 11

 

If the Applicant amends the application to delete the duplicate reference to “refrigerators,” the amended identification of goods should read as follows:

 

Cooking apparatus and devices, namely, barbeques and grills, barbeque grills, gas grills, barbeque smokers; electric grills, charcoal grills, portable wood pellet grills and hibachis; electric indoor and outdoor grills; Torch burners, namely, propane and butane gas torches for culinary and cooking purpose; utility lighters for lighting barbeque grills; Grill accessories, namely, warming trays, smoker boxes, charcoal grill conversion units for converting charcoal grills to electric smokers, grilling plates for cooking, searing, browning, barbecuing and grilling food; Lava rock for use in barbeque grills; sinks; electric sous-vide cookers; refrigerators; microwave, baking and cooking ovens; gas burners; electric ceramic rice, pressure and slow cookers; freezers; cooking stove ranges; gas ranges; gas oven ranges; range hoods for household purposes; stovetops in the nature of cooking stoves; apparatus for cooking, namely, cook tops; microwave ovens; cooking ovens; warming drawers for kitchens; laundry centers, namely, a clothes dryer combined with a clothes washers; air washers; washers for water taps; washers for water faucets; clothes dryers; electric wine coolers, namely, refrigerated cabinets containing racks for wine bottles and storage shelves; Electric night lights; LED (light emitting diode) lighting fixtures; Electric Lanterns, Oil Lanterns, Lanterns for lighting; sconce lighting fixtures; lamps; light bulbs string lights for festive decorations; solar-powered all-weather lights; portable utility lights; electric lights for Christmas trees; battery operated electric candles; electric candles; electric light bulbs; electric lighting fixtures; electric fireplaces; fireplace inserts in the nature of natural gas fuel burners and propane fuel burners; electric warmers to melt wax; dispensing units for air fresheners; globes for lamps; LED underwater and landscape lights; _________ [indicate whether “LED” or “electric”] luminaires; LED candles; electric candle warmers; flameless candles; air purifiers  

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Assistance

 

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. 

 

 

 

 

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  

 

 

/Susan A. Richards/

Susan A. Richards

Trademark Examining Attorney

Law Office 103

(571) 27 2-8266

Susan.Richards@uspto.go

 

 

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 October 12, 2019 for

U.S. Trademark Application Serial No. 88512370

 

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. 

 

 

/Susan A. Richards/

Susan A. Richards

Trademark Examining Attorney

Law Office 103

(571) 27 2-8266

Susan.Richards@uspto.go

 

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 October 12, 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.”