United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88558839
Mark: CAMPMOON
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Correspondence Address: |
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Applicant: Wang, Xuanyu
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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 30, 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 THAT APPLICANT MUST ADDRESS
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5507824, 5507825, 5507826, and 5636162. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant has applied to register CAMPMOON in standard character form for “all-purpose athletic bags; alpenstocks; athletic bags; backpacks; backpacks with rolling wheels; baggage tags; bags for climbers in the nature of all-purpose carrying bags; bags for sports; beach umbrellas; belt bags and hip bags; canvas shopping bags; duffle bags; gym bags; travelling trunks; umbrellas and parasols; air beds, not for medical purposes; beach chairs; beds, mattresses, pillows and bolsters; camping furniture; chairs; containers for transport, not of metal; cushions; deck chairs; folding beds; lounge chairs; outdoor furniture; plastic storage drums; plastic suction cups; porch swings; sleeping pads; awnings of textile; awnings of textile or synthetic materials; bed tents; bivouac sacks being shelters; camouflage nets; canvas canopies; grow tents; hammocks; packaging bags of textile material; rain flies for tents; tarpaulins; tents; tents for mountaineering or camping; unfitted vehicle covers; blankets for outdoor use; canvas fabric; cotton fabric; felt and non-woven textile fabrics; flannel; liners adapted to sleeping bags for camping; mattress pads; mosquito nets; sleeping bags for camping; synthetic fiber fabrics; textile exercise towels; towels; travelling rugs; travelling rugs; woven felt; cotton fabrics; knitted fabrics; silk fabrics.” The registered marks are:
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
The registered marks are for CAMPINGMOON in standard characters. The application is for the mark CAMPMOON in standard characters.
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 the present case, applicant’s mark is similar to the registered mark in sound, appearance and connotation. CAMPMOON and CAMPINGMOON also create the same connotation. Overall, the marks have the same commercial impression.
COMPARISON OF THE SERVICES
Applicant’s goods are all-purpose athletic bags; alpenstocks; athletic bags; backpacks; backpacks with rolling wheels; baggage tags; bags for climbers in the nature of all-purpose carrying bags; bags for sports; beach umbrellas; belt bags and hip bags; canvas shopping bags; duffle bags; gym bags; travelling trunks; umbrellas and parasols; air beds, not for medical purposes; beach chairs; beds, mattresses, pillows and bolsters; camping furniture; chairs; containers for transport, not of metal; cushions; deck chairs; folding beds; lounge chairs; outdoor furniture; plastic storage drums; plastic suction cups; porch swings; sleeping pads; awnings of textile; awnings of textile or synthetic materials; bed tents; bivouac sacks being shelters; camouflage nets; canvas canopies; grow tents; hammocks; packaging bags of textile material; rain flies for tents; tarpaulins; tents; tents for mountaineering or camping; unfitted vehicle covers; blankets for outdoor use; canvas fabric; cotton fabric; felt and non-woven textile fabrics; flannel; liners adapted to sleeping bags for camping; mattress pads; mosquito nets; sleeping bags for camping; synthetic fiber fabrics; textile exercise towels; towels; travelling rugs; travelling rugs; woven felt; cotton fabrics; knitted fabrics; silk fabrics.
The registrant’s goods are barbecues; electric griddles; electric roasters; gas burners; humidifiers for household purposes; lamps; lanterns for lighting; non-electric pocket warmers, namely, chemically-activated heating packets for warming hands; refrigerating appliances and installations;
chaise lounges; cushions; display boards; furniture; furniture of metal; metal indoor window blinds; non-metal trestles for supporting tables; seats; stools; tables; bowls; buckets; chopsticks; combs; containers for household or kitchen use not of precious metal; cups; grills in the nature of cooking utensils; metal cooking pans; non-stick barbecue grill cooking mats for use on grills; potholders; tea pots; tea services in the nature of tableware; labels of metal; metal chains; metal hardware, namely, springs; metal pipe supports; metal water pipes; nails; rivets, cramps and nails of metal; steel wire; tension links of metal; tent pegs of metal; tool chests of metal, empty.
Both the applicant and registrant provide camping related items. Furthermore, the applicant is providing related products such as tents and tent pegs; cushions and furniture. 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 various types of camping equipment, 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).
The attached Internet evidence, consisting of third party vendors, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark. 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 total, the two marks CAMPMOON and CAMPINGMOON create the same commercial impression and the evidence shows that the goods are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the products originate from a common source. Therefore, registration must be refused under Section 2(d) of the Lanham Act.
SPECIMEN DOES NOT MATCH DRAWING – MATERIAL – FOR INTERNATIONAL CLASS 22
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 22, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as CAMPMAX. However, the drawing displays the mark as CAMPMOON. The mark on the specimen does not match the mark in the drawing because the marks CAMPMAX and CAMPMOON are different. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the substitution of the term MAX for MOON creates a separate commercial impression.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
U.S. COUNSEL REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
ASSISTANCE
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
/Tarah Hardy Ludlow/
Examining Attorney
Law Office 110
(571) 272-9361
tarah.hardy@uspto.gov
RESPONSE GUIDANCE
