To: | Airgraft, Inc. (sherry.flax@saul.com) |
Subject: | U.S. Trademark Application Serial No. 88532480 - CLEAN - N/A |
Sent: | October 29, 2019 09:36:34 AM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88532480
Mark: CLEAN
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Correspondence Address: |
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Applicant: Airgraft, Inc.
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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: October 29, 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.
SECTION 2(d) REFUSAL – 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. 3436937 and 4501162. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied to register the mark CLEAN for Business administration assistance; Business management; Computerized on-line retail store services in the field of vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, digital and data insight platforms; On-line retail store services featuring vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, digital and data insight platforms; Retail store services featuring vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, digital and data insight platforms
Already registered are the marks:
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.
Comparison 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).
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 this case applicant’s mark CLEAN and the registrations SMOKIN’CLEAN and CLEAN SMOKE all contain the dominant term “CLEAN”.
Moreover, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram& Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
With regard to the other wording in registrants’ marks, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). The registrants’ use of the terms SMOKIN’ and SMOKE are descriptive of the cigarettes, electronic cigarettes and related goods the registrants offer under their respective marks. In fact, “cigarette” is defined as “a small roll of finely cut tobacco for smoking.” “Smoke” is defined as “a vapor.” See attached dictionary evidence from www.ahdictionary.com, and electronic cigarettes emit vapors. See attached webpage from www.cancer.org.
Registrant’s mark SMOKIN’CLEAN is used for cigarette papers, and registrant’s mark CLEAN SMOKE is used for electronic cigarette liquids and cartridges. As such the terms SMOKIN’ and SMOKE are descriptive of the registrants’ goods and do nothing to detract from the dominant feature of the marks, CLEAN. This further supports the fact that the cited marks are identical in part.
As such, the applicant’s proposed mark is confusingly similar in sound and appearance to the registered marks and creates the same commercial impression.
Comparison of the Goods/Services
In this case applicant intends to offer Business administration assistance; Business management; Computerized on-line retail store services in the field of vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, digital and data insight platforms; On-line retail store services featuring vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, digital and data insight platforms; Retail store services featuring vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, digital and data insight platforms under its brand.
Registration No. 3436937 offers cigarette papers under its brand.
Registration No. 4501162 offers electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges under its brand.
Importantly, “article” is defined as “an individual thing or element.” See attached dictionary evidence from www.ahdictionary.com. Applicant’s “smoking articles” include such things as registrant’s cigarette papers used for smoking. See attached webpage from www.smokersoutletonline.com.
Third parties commonly offer the applicant’s and registrants’ goods and services under the same brand. For example, Smoker’s Outlet is an online retail store selling pipe tobacco, cigarette papers, electronic cigarettes, and flavorings. See attached webpages from www.smokersoutletonline.com. Vapors Smoke Shops is an online retail store offering tobacco products, including cigarettes and cigarette papers, as well as, electronic cigarettes and flavorings under its brand. See attached webpages from http://vaporsmokeshop.com. Finally, Vape n Cigar is an online retail store offering tobacco products and accessories, including cigarettes and cigarette papers, as well as, electronic cigarettes, batteries and chargers, and flavorings. See attached webpages from http://vapencigar.com.
The attached Internet evidence, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark. 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. The goods and/or services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrants’ 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).
Therefore, the applicant and the registrants use their respective marks for similar and related retail store services selling related smoking and vaping products. Consequently, customers encountering the applicant’s mark CLEAN and the registrants’ SMOKIN’CLEAN and CLEAN SMOKE marks on the same and closely related goods/services would come to the mistaken conclusion that the goods/services emanate from the same source. Accordingly, registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the following.
PRIOR FILED 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 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.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In this case, the mark CLEAN conveys information that the products applicant sells “deliver clean vapor.” More specifically, applicant touts that “[u]nlike the common wick and coil systems, our ceramic heating element delivers diffused heat over a wider surface area for gentler and more controlled vaporization that removes burn and the unwanted by products. The result is clean, great tasting vapor.” See attached webpage from applicant’s website at www.airgraft.com. As such, applicant’s mark CLEAN is merely descriptive and registration is refused under Section 2(e)(1) of the Trademark Act.
AMENDED IDENTIFICATION OF SERVICES REQUIREMENT
The wording in the identification of services for International Class 35 must be clarified as noted below because it is too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, the wording “digital and data insight platforms” lacks clarity as its fails to identify particular “goods” that would be sold in retail stores, or fails to clarify the means by which applicant’s retail store services are to be provided.
Applicant may substitute the following wording, if accurate, suggested changes in bold, alternative suggestions in {bold brackets}:
(Intent to Use Based on 44(d) Priority Application) Business administration assistance; Business management; Computerized on-line retail store services in the field of vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, all provided through {alternatively, computer software for} digital and data insight platforms; On-line retail store services featuring vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, all provided through {alternatively, computer software for} digital and data insight platforms; Retail store services featuring vaporizers, vaporizer cartridges and accessories, pharmaceuticals, refill cartridges, electronic cigarettes, electronic cigarette cartridges and accessories, electronic cigarette liquid (e-liquid), packaging, batteries and chargers, carrying cases and storage cases, hardware accessories for electronic cigarettes, smokers' articles, tobacco substitutes, flavor enhancers and flavorings, clothing, footwear, and headgear, medical apparatus, digital recording media, all provided through {alternatively, computer software for} digital and data insight platforms in Class 35
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.
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
/Laraine Burrell/
Laraine M. I. Burrell
Examining Attorney
Law Office 111
(571) 272-8220
laraine.burrell@uspto.gov
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