Offc Action Outgoing

TOUGHTAG

Infosight Corporation

U.S. Trademark Application Serial No. 88559707 - TOUGHTAG - INF 5-112US


United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 88559707

 

Mark: TOUGHTAG

 

 

 

 

Correspondence Address: 

JERRY K. MUELLER, JR.

MUELLER LAW, LLC

3841B ATTUCKS DRIVE

WEDGEWOOD OFFICE PARK

POWELL, OH 43065-6082

 

 

 

Applicant: Infosight Corporation

 

 

 

Reference/Docket No. INF 5-112US

 

Correspondence Email Address: 

smueller@muelleriplaw.com

 

 

 

NON-FINAL 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:  November 04, 2019

 

The undersigned trademark examining attorney has reviewed the referenced application. 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.

 

Registration Refused – Likelihood Of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2451256. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

 

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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Applicant’s proposed mark is TOUGHTAG for identification tags of metal.

 

The registered mark is TUFFTAG for blank, partially printed and printed tags.

 

The marks are extremely similar in that the word TUFF in the registered mark is simply an intentional misspelling of the word TOUGH in applicant’s proposed mark. This results in the marks being phonetic equivalents. Similarity in sound alone may be sufficient to support 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).

 

Moreover, both parties offer tags. It is common for a single source to offer both metal tags, as applicant seeks to, and non-metal tags, as the registrant does. See the 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 listed therein, namely metal and non-metal tags, 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). Consumers are therefore likely to believe mistakenly that the goods emanate from a single source.

 

Consequently, there is a likelihood of confusion, and a refusal to register pursuant to Section 2(d) is appropriate in this case. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

TEAS Plus Application Requirements

 

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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

 

 

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 law office referenced in the signature block.

 

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

U.S. Trademark Application Serial No. 88559707 - TOUGHTAG - INF 5-112US

To: Infosight Corporation (smueller@muelleriplaw.com)
Subject: U.S. Trademark Application Serial No. 88559707 - TOUGHTAG - INF 5-112US
Sent: November 04, 2019 01:03:31 PM
Sent As: ecom115@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 04, 2019 for

U.S. Trademark Application Serial No. 88559707

 

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. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@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 November 04, 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.”

 

 

 


uspto.report is an independent third-party trademark research tool that is not affiliated, endorsed, or sponsored by the United States Patent and Trademark Office (USPTO) or any other governmental organization. The information provided by uspto.report is based on publicly available data at the time of writing and is intended for informational purposes only.

While we strive to provide accurate and up-to-date information, we do not guarantee the accuracy, completeness, reliability, or suitability of the information displayed on this site. The use of this site is at your own risk. Any reliance you place on such information is therefore strictly at your own risk.

All official trademark data, including owner information, should be verified by visiting the official USPTO website at www.uspto.gov. This site is not intended to replace professional legal advice and should not be used as a substitute for consulting with a legal professional who is knowledgeable about trademark law.

© 2024 USPTO.report | Privacy Policy | Resources | RSS Feed of Trademarks | Trademark Filings Twitter Feed