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:  November 22, 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal
• Section 2(e)(1) Refusal – Merely Descriptive – Partial Refusal
• Amended Identification of Goods Required
• Multiple-Class Application Requirements

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED WITHIN THIS SECTION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4886222.  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.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is BOUNCE and registrant’s mark is BOUNCE.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

Therefore, the marks are confusingly similar. 

 

Similarity of the Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording in entries, GAMES, TOYS, AND PLAYTHINGS; balls; outdoor games; play balls; toy game balls and accessories therefor; play balls; balls used for game play, baseball bats, softball sets, comprising softballs and softball bats, tennis rackets, golf clubs and sets, comprising golf balls and golf clubs and containers therefor; plush covered balls; balls for play, namely, balls for juggling, games, and sports, which presumably encompasses all goods of the type described (balls), including registrant’s more narrow “Game equipment, namely, balls and structures containing openings for playing indoor and outdoor games”.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Theses goods are all encompassed because both applicant and registrant offer balls.

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

Therefore, upon encountering the applied-for mark and the registrant’s mark for substantially similar goods, consumers are likely to be confused and mistakenly believe that the applicant’s goods and the registrant’s goods emanate from a common source or are otherwise connected in some way. Accordingly, registration of the applied-for mark is refused under Section 2(d) because of a likelihood of confusion.

 

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 additional refusal.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED WITHIN THIS SECTION

 

Registration is refused because the applied-for mark merely describes a characteristic, or intended use of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Here, the applicant has applied-for the mark “BOUNCE” in conjunction with the following goods for which the mark is descriptive of: GAMES, TOYS, AND PLAYTHINGS; balls; play balls; toy game balls and accessories therefor; toy bouncers, namely, sit-down bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, bounce balls; inflatable pit balls for recreational use; inflatable hopper balls for recreational use; play balls; balls used for game play, baseball bats, softball sets, comprising softballs and softball bats, tennis rackets, golf clubs and sets, comprising golf balls and golf clubs and containers therefor; plush covered balls; balls for play, namely, balls for juggling, games, and sports; inflatable thin rubber toys and rubber-like toys.

 

The attached evidence from Merriam-Webster shows BOUNCE means “to cause to rebound or be reflected”, such as to bounce a ball. In conjunction with the above, applicant provides various balls as well as bounce houses and bounce boards. Thus, the word BOUNCE refers to a characteristic of the goods, that they bounce, or their intended purpose, to rebound.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

AMENDED CLASSIFICATION AND IDENTIFICATION OF GOODS REQUIRED

 

Applicant has classified the following goods in International Class 28:  “pet accessories”, “pet clothing”, “pet jewelry”, “pet beds and furniture” and “pouches and bags for storing and disposal of pet waste”.  However, the proper classification for each item is as follows below.

 

Additionally, applicant has provided the application fee for only one international class.  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Additionally, the following is indefinite for the specified reason. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. A suggested Identification of Goods follows below.

 

Entry	Issue
Games, toys, and playthings	This entry is indefinite because the specific types of items being offered isn’t specified, such as toy robots.
Pet accessories	This entry is indefinite and over broad because it could encompass items in multiple classes, such as charms in Class 14 and canvas, vinyl, and leather pouches for holding disposable bags to place waste in in Class 18
Pet beds	This entry is indefinite because applicant must specify that the beds are for household pets
Pouches and bags for storing and disposal of pet waste	This entry is indefinite because the material comprising the pouches isn’t specified and must be clarified.
Sound toys; Toys that generate sounds	These entries are indefinite because the types of toys are unclear. Applicant must further specify the nature of the toys, such as infant toys

 

Applicant is advised to delete or modify the duplicate entries in the identification of goods in International Class 28 (see strikethrough entries below). See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate: 

 

CLASS 14       Pet accessories, namely, charms; pet jewlery

 

CLASS 18       Pet clothing; Pet accessories, namely, canvas, vinyl and leather pouches for holding disposable bags to place waste in

 

CLASS 20       Beds for household pets; pet furniture

 

CLASS 28       GAMES, TOYS, AND PLAYTHINGS (examiner suggests deleting this entry unless applicant wishes to specify other items); Toys, games, playthings, and sporting equipment, namely, all of the following: party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; toys, namely, bubble toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; bubble toys, namely, bubble making wand and edible solution sets; water toys; games involving using bubble solution and bubble blowing toys; parlor games; play balls; toy game balls and accessories therefor; toy cannons; toy bouncers, namely, sit-down bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, bounce balls; inflatable pit balls for recreational use; inflatable hopper balls for recreational use, action figure toys, play sets for actions figures; party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; toys, namely, bubble making toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; water toys; games involving using bubble solution and bubble blowing toys; play balls; balls used for game play, baseball bats, softball sets, comprising softballs and softball bats, tennis rackets, golf clubs and sets, comprising golf balls and golf clubs and containers therefor; card games; figurines in the nature of modeled plastic toy figurines; molded plastic character toys with connectable and/or interchangeable elements; collectible toy figurines; collectable toy animal figurines; collectible bath toys; children's dress-up fashion accessories in the nature of toy purses, toy shoes, and toy hats; toy action figures; plastic toy characters; collectible plastic toy characters; collectable bendable toy characters; accessories for modeled plastic toy figurines; accessories for toy plastic characters; articles of clothing for toys, namely, outfits for toys; pouches for toys, namely, cases for toy vehicles; puppets; puzzles; packaged amusement and educational games, namely, electronic educational games in the nature of hand-held units for playing educational electronic games; electronic educational game machines; toy environments in the nature of toy environments for use with toy figurines and toy environments for use with toy characters and figurine play pieces, namely, toy buildings, toy vehicles, toy building structures, toy construction sets; play sets for toy figurines, play sets for toy characters; doll costumes, namely, play toy costumes; fantasy character toys; toy action figures and accessories therefor; play toys and accessories for children to imitate a fantasy role, namely, play toy guns, play toy rifles, play toy pistols, play rifle and play pistol sets, play toy gun holsters, play gun and toy holster sets, and toy accessories therefor; inflatable elastomeric toys in the shape of animals, insects, figurines, and creatures, and other recognizable object shapes when not in a stressed or stretched state; and elastomeric balls for play; plush toys, plush stuffed toys, plush dolls and plush covered balls; action skill games; hand-held, non-electronic skill games; tossing disc toys; toy projectiles and accessories therefor; action figures, dolls and figurines, rubber toys in the shape of food and household goods;, toy watches and toy jewelry; toy holiday ornaments of rubber; balls for play, namely, balls for juggling, games, and sports; toy animals; toy insects; inflatable thin rubber toys and rubber-like toys; rubber character toys; toy dice; toy dolls; elastic toys, namely, rubber band toys that assume particular animal, letter and other object shapes when not in a stressed or stretched state; toy guns and toy ammunition, toy dart guns, dart games and darts; toy weaponry, namely, hand weapons in the nature of firearms, cap guns, handheld projectile-launchers, sling-shots, and ammunition for sling-shots; toy guns; toy dart guns; toy currency, toy make-up and toy make-up accessories; dolls; toy coin banks; toy purses and toy jewelry; bath toys; sand toys, toy phones and toy personal digital assistants; fashion toy clothing, toy jewelry, toy make-up and toy make-up accessories, light-up toys for projecting images, bubble toys, namely, bubble making wand and solution sets, ride-on toys; toy purses, toy keychains, toy coins and currency, walkabout toys, namely, wind-up walking toys; toy target shooting sets containing toy weapons and targets sold together as a kit; fitted covers specially adapted for toy cars, airplanes, and boats; role-playing toys in the nature of play sets for children to imitate real life situations and occupations, and role-playing games; toy weapons; toy swords, toy guns and toy darts; toy eyeglasses; bubble making toys and solution therefor, sold separately and as a unit; hanging toy mobiles, toy viewing glasses and pens/markers, all packaged and sold as a unit; diorama playsets for action figures and dolls; dolls and doll accessories; pet toys; sound toys in the nature of {applicant to specify, e.g., action figures, infant toys}; toys that generate sounds in the nature of {applicant to specify, e.g., action figures, infant toys }

 

Scope Advisory. 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).

 

ID Manual. 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class.  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.

 

GUIDELINES FOR RESPONDING TO THIS OFFICE ACTION

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Luke Cash Browning/

Luke Cash Browning

Trademark Examining Attorney

Law Office 127 | (571) 270-5767

Luke.Browning@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 office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 22, 2019 for

U.S. Trademark Application Serial No. 88579529

 

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. 

 

 

/Luke Cash Browning/

Luke Cash Browning

Trademark Examining Attorney

Law Office 127 | (571) 270-5767

Luke.Browning@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 22, 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.”