Reconsideration Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

Issue date:  April 07, 2020

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

In particular, removing the overlapping goods, namely, soaps, from the application does little to avoid consumer confusion because the remaining goods at issue can still found by the same entity.  For example, the previously attached evidence and hereto demonstrate several entities make toothpaste, shampoo and deodorants under the same trademark and thus are of a kind that may emanate from a single source under a single mark. Specifically, Fresh, Dove, L’Occitane, Arm & Hammer, Tom’s of Maine and Aesop make soap alongside toothpaste, deodorant and/or shampoo.

Furthermore, applicant contends the Trademark Office routinely registered marks featuring the term TANDEM and thus the cited registration does not support a likelihood of confusion because this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. The third-party registrations are not persuasive because the registrations do not feature similar goods. The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). 

Finally, where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). The marks at issue share highly related goods as demonstrated by the evidence of record, thereby lessening the degree of similarity required between the marks for consumer confusion because the applied-for mark appears as a shortened form of the registered mark.

Accordingly, the following refusals made final in the Office action dated February 25, 2020 is maintained and continued: 

            •  SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

/Kamal Bal/

Kamal S. Bal

Examining Attorney

Law Office 119

571-272-5645

kamal.bal@uspto.gov

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on April 07, 2020 for

U.S. Trademark Application Serial No. 88555979

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. 

/Kamal Bal/

Kamal S. Bal

Examining Attorney

Law Office 119

571-272-5645

kamal.bal@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 April 07, 2020, 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.”