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 17, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Registration is refused under Section 2(d) of the Trademark Act.  The refusal and any other issues raised in this Office action must be addressed within the specified time period indicated above.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Section 2(d) Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2794850.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Similarity of 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).

 

Applicant’s proposed mark is SELF (standard character).  The cited mark is SELF (stylized).  Both marks include an identical word.  The only difference between the two marks is the stylization of the term “SELF” in the registered mark.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Both marks will be vocalized in the same manner despite the registered mark being stylized.  The marks are essentially phonetic equivalents and thus sound similar.  In addition to sharing identical words, similarity in sound supports a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

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).

 

For the reasons set forth above, the examining attorney finds that individuals purchasing the goods may believe that the marks are somehow connected or affiliated with each other leading to confusion as to the source of the goods. 

 

Similarity of Goods

 

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

Applicant’s proposed mark is associated with electrical power extension cords; wireless speakers; headphones; ear buds.[1]  The mark in the cited registration is used in connection with electrical transformers; step down transformers; sensors for controlling lighting; electric light dimmers; electric switches; electrical connectors; lighting ballasts; electric switches with automatic timers; burglar alarms; voltage regulators for electric power. 

 

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 as those of both applicant and registrant in this case.  This evidence shows that the goods such as electric switches, extension cords, speakers, headphones and earbuds 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).

 

Based on the highly related nature of the goods set forth in the application and cited registration, and the similar marks, the du Pont factors of the similarity of the marks and goods favor a finding of likelihood of confusion.  Accordingly, the proposed mark is refused under Section 2(d) of the Trademark Act.  Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Section 2(d) Refusal Limited to Specific Goods

 

The stated refusal refers to the goods immediately below and does not bar registration for the other goods.

 

“electrical power extension cords; wireless speakers; headphones; ear buds” – Class 9.

 

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

 

(1)  Deleting the goods to which the refusal pertains;

 

(2)  Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

 

Identification of Goods

 

The examining attorney may require an amendment of the identification language to accurately describe the goods.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979). 

 

Specific wording in the identification of goods must be clarified as indicated below.  The goods must be identified by their common commercial descriptions.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The unacceptable descriptions in the identification are identified by the use of bracketed explanations that immediately follow such descriptions.  If the examining attorney could deduce the nature of the goods from the incomplete or indefinite description, comments and suggestions on how to make the description acceptable are provided. 

 

The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark.   In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

 

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.

 

The language identified below must be amended.

 

“Electrical power extension cords; wireless speakers; headphones; ear buds; armbands specially adapted for personal electronic devices, namely, mobile phones; safety products, namely, reflective safety bands to be worn on the body” – Class 9; [ACCEPTABLE]

 

“Sports bags” – Class 18; [ACCEPTABLE]

 

“Water bottles sold empty” – Class 21; [ACCEPTABLE]

 

“Sports training towels” – Class 24; [ACCEPTABLE]

 

“Exercise reaction balls; chin-up/sit up exercise bars; tricep exercise ropes; weight lifting equipment, namely, weight lifting hooks; medicine balls; namely, bench press bar pads; ab straps with weights for performance of weight resistance exercises; weight lifting belts; exercise equipment, namely, foam rollers not for physical therapy use;

 

personal exercise mats [wording “personal exercise mats” identifies Class 27 goods—see attached ID Manual entry];

 

elastic resistance exercise devices, namely, manually-operated exercise equipment, namely, abdominal crunchers and body-training apparatus for toning thighs [wording “elastic resistance exercise devices, namely, manually-operated exercise equipment, namely, abdominal crunchers and body-training apparatus for toning thighs” is unclear, indefinite and includes redundant language—may adopt: manually-operated exercise equipment in the nature of elastic resistance devices for exercising the abdominal muscles and toning the thighs];

 

manually-operated exercise equipment, namely, triceps crunchers [term “crunchers” is not recognized as a common commercial term within the exercise equipment industry—may adopt: manually-operated exercise equipment for use in exercising the triceps];

 

exercise equipment namely, rowing machines;

 

exercise twist boards for [specify, e.g., exercising the abdominal muscles];

 

aerobic steps; kettle bells; exercise equipment, namely, pilates rings; push-up exercise bars; slimming belts, namely, waist trimmer exercise belts; aerobic mini-steps with cords;

 

and exercise chairs [wording “and exercise chairs” does not describe goods that would be classified in Class 28 because there is nothing specific about the description of the chairs which would warrant classification as a sports item in Class 28];

 

balance boards used with exercise balance balls for improving strength, toning, conditioning, balance, and proprioception;

 

chinning/push-up [wording “chinning/push-up” is unclear—may adopt: chin up and push-up] exercise bars;

 

bags specially adapted to carry yoga equipment [“bags specially adapted to carry yoga equipment” overbroad and may encompass goods in Class 27 and Class 28. Yoga mats are classified in Class 27 under Nice 11-2017, while yoga blocks and straps, for example, are classified in Class 28];

 

exercise step blocks; fitness equipment, namely, straps used for yoga and for carrying a yoga mat;

 

sporting goods and equipment for speed training, namely, hurdles, resistance chutes and agility cones and poles; exercise agility balls;

 

lateral resistors [word “resistors” is unclear—describe the goods by identifying the components] for performance of weight resistance exercises;

 

reaction belts for agility training in the nature of [describe the belts];

 

exercise training [term “training” is ambiguous] balls; exercise trainer [term “trainer” is ambiguous] bar;

 

weighted vests [wording “weighted vests” is indefinite—may adopt: weighted vests for use in exercise];

 

sand bags used as exercise weights [wording “sand bags used as exercise weights” does not contain any characteristics that would warrant classification in Class 28—applicant may adopt:  exercise weights in the nature of sandbags];

 

balance boards for improving strength, toning, conditioning, balance, and proprioception; punching bags; athletic sporting goods, namely, ankle and knee guards for athletic use” – Class 28.

 

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).

 

The application may identify goods in more than five international classes; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least six classes; however, applicant submitted fees sufficient for only five classes.  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.

 

 

 

 

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  

 

 

/Christopher Buongiorno/

Christopher Buongiorno, Attorney

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

 

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.