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 28, 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

 

The following is a summary of issues:

 

(1)   Likelihood of Confusion – Refusal to Register under Section 2(d) – Seventeen (17) Cites

(2)   Potential 2(d) Advisory – Three (3) Potential 2(d) Cites

(3)   Mark is Merely Descriptive – Refusal to Register under Section 2(e)(1)

(4)   *Advisory – Amendment to the Supplemental Register to Overcome the 2(e)(1) Refusal

(5)   Identification of Goods

(6)   Multi-class Advisory and Requirements

 

 

Likelihood of Confusion – Refusal to Register under Section 2(d) – Multiple Cites

 

The Applicant has applied to register LUXE for:

 

Candles, in Class 4;

 

Tableware, in Class 8;

 

Furniture for house, office and garden; household décor; storage and organization, in Class 20;

Dinnerware; barware; beverage glassware, in Class 21;

 

Bedding; bath towels, in Class 24;

 

Rugs, in Class 27.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos.:

 

5641213 LUX LUXE AROMATHERAPY (and design) for “Scented candles” – partial refusal as to Class 4.

 

4549534 LUXE FURNITURE & DESIGN for “Retail store services in the field of furniture and home furnishings” – full refusal as to all classes.

 

5353578 LUXE PILLOW for “Pillows” – partial refusal as to Classes 20 and 24.

 

5459107 LUXE L 100% FAUX FUR (stylized) for “Pillows; Pouf ottomans” – partial refusal as to Classes 20 and 24.

 

5429969 LUXE BAG CARE for “Bag hangers in the nature of non-metal hooks used to hang a purse or bag from clothing rods” – partial refusal as Class 20.

 

5064646 LUXE for “Residential and commercial custom seating in the nature of chairs and benches” – partial refusal as to Class 20.

 

4318396 LUXE BATH WORKS (and design) for “Cabinetry for the home; Bathroom Vanities, Medicine Cabinets and Bathroom Accessories, namely, mirrors, and shelves” – partial refusal as to Class 20.

 

3747147 LUXE for “Salon furniture” – full refusal as to all Classes.

 

5457872 LUXE L 100% FAUX FUR (stylized) for “Lap rugs; Throws” – partial refusal as to Classes 24 and 27.

 

4872266 LUXE POLY FIBER for “Bed linen; Bath linen; Sheets; Sheet sets; Towel sets; Towels; Household linen” – partial refusal as to Class 24.

 

4351275 LUXE BLANKETS for “Textiles and fabrics, namely, bedding, namely, bed blankets, bed skirts, bedspreads, comforters, coverlets, quilts, throws, duvets” – partial refusal as to Class 24.

 

4351273 LUXE BLANKETS for “Textiles and fabrics, namely, bedding, namely, bed blankets, bed sheets, bed skirts, bedspreads, comforters, coverlets, quilts, throws, duvets, pillow cases, mattress covers, mattress pads” – partial refusal as to Class 24.

 

4362194 LUXE TOWELS for “Textiles and fabrics, namely, bath linens, towels, wash cloths and shower curtains” – partial refusal as to Class 24.

 

4471501 LUXE COTTON for “Textiles and fabrics made either in whole or in part of cotton, namely, bedding, namely, bed blankets, bed sheets, bed skirts, bedspreads, comforters, coverlets, quilts, throws, duvets, pillow cases, mattress covers, mattress pads, bath linens, towels, wash cloths, shower curtains, table and kitchen linens, fabric table runners, textile napkins, textile place mats, cloth coasters, dish cloths, pot holders, kitchen towels, window coverings and treatments, namely, curtains, draperies, sheers, swags and valances, and cushion covers” – partial refusal as to Class 24.

 

5064544 LUXE PERCALE for “Bedding, namely, duvets, bed sheets, bed blankets, pillow cases, comforters, sheet sets; all made with percale fabric” – partial refusal as to Class 24.

 

5811401 LUXE RUGS (and design) for “rugs, bathroom rugs” – partial refusal as to Class 27.

 

537322 LUX for “LED (light emitting diode) lighting fixtures; LED lamps” – partial refusal as to Class 20.

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

Similarities of the Marks

 

The applicant’s mark is LUXE.  The registered marks are such that the dominant portion of the mark is LUXE (or one registration of LUX).

 

In the registrations, any additional terms have been disclaimed or are descriptive or generic for their respective goods e.g. “BLANKETS” has been disclaimed from the mark LUXE BLANKETS for a listing of good that include “bed blankets”.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

And/or the term LUXE is dominant as being listed first or in a predominant manner.

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

As to LUXE vs. LUX, these terms would be pronounced the same.

 

The marks are essentially phonetic equivalents and thus sound similar.  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).

 

As to two registrations, the Applicant’s mark LUXE and the registered marks LUXE are identical.

 

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). 

 

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 and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of the Goods and/or Services and the Channels of Trade

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Some of the marks are refused under partial refusals as to certain classes.  In those instances, the parties’ goods (and/or services) overlap e.g.:

 

The registered “scented candles” are including within the Applicant’s broad ID of “candles” in Class 4.

 

The registered “retail stores services featuring furniture and home furnishings” is a full refusal as to all Applicant’s goods because all of Applicant’s goods are a type of furniture or home furnishing.

 

The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

The multiple registrations for “pillows” would be encompassed by the Applicant’s “household décor”.

 

And the Applicant’s “rugs” would encompass the registered “rugs, bathroom rugs.”

 

In all instances the parties’ goods are the same or overlap or would be provided by a single entity.

 

The similarities among the marks and the goods (and/or services) are so great as to create a likelihood of confusion among consumers.

 

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).

 

Accordingly, the mark is refused registration on the Principal Register under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Potential 2(d) Cites – Applicant Not Entitled to Register – Two or More Earlier-filed Pending Applications – Applicant May Present Arguments

 

The filing dates of pending U.S. Application Serial Nos. 87/509084 [LUXE PROVENCE], 88589104 [LUX], and 88589087 [LUX] precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant should note the following additional ground for refusal.

 

Mark is Merely Descriptive – Refusal to Register under Section 2(e)(1)

 

Registration is refused because the applied-for mark merely describes a feature/characteristic 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 and/or services.  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)). 

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  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 In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

The applicant has applied to register LUXE for:

 

Candles, in Class 4;

 

Tableware, in Class 8;

 

Furniture for house, office and garden; household décor; storage and organization, in Class 20;

 

Dinnerware; barware; beverage glassware, in Class 21;

 

Bedding; bath towels, in Class 24;

 

Rugs, in Class 27.

 

The term “luxe” refers to “expensive and of high quality; luxurious” and “luxury”.  See attached definition via Google.  Another dictionary definition defines “luxe” as “luxurious, sumptuous”.  See http://www.merriam-webster.com/dictionary/luxe and attached.  And http://www.ahdictionary.com/word/search.html?q=luxe defines “luxe” as “1.  The condition of being elegantly sumptuous.  2. Something luxurious; a luxury.”  See attached.

 

Thus, luxe is descriptive of a feature of the Applicant’s goods, namely, describing the Applicant’s goods as high quality and a luxury item.

 

At Kohl’s Scott Living (http://www.kohls.com/feature/scott-living.jsp?kwid=p48408877973&utm_source=google&utm_medium=cpc&utm_term=&utm_campaign=DSA_Scott+Living_Brands_NC&UTM_Adgroupid=58700005346138330&pfx=pfx_google_roi&cid=genericsearch&gclid=EAIaIQobChMIzoHWnYGO5gIVE18NCh0TkAN_EAAYASAAEgKacfD_BwE&gclsrc=aw.ds) this line of goods is describes as follows:

 

“We believe luxury should be accessible to everyone.  From our hearts to your home, we hope you love Scott Living as much as we do.”

 

See attached.

 

Material obtained from applicant’s website is acceptable as competent evidence.  See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); TBMP §1208.03; TMEP §710.01(b).  Here, the evidence is from the store that is selling (exclusively) Applicant’s goods.

 

Also, third parties use the term “luxe” to describe Applicant’s types of goods.  E.g.:

 

http://www.brides.com/story/luxe-candle-brands-wedding-registry has a story entitled “5 Luxe Candle Brands Worth Adding to Your Wedding Registry.”  See attached.

 

http://freshome.com/2013/11/15/10-simple-ways-awaken-interiors-luxe-details/ has a story entitled “10 Simple Ways to Awaken Your Interiors With Luxe Details”.  The intro reads:

 

If you love the sumptuous feel of satin and smooth textiles between your fingertips or the opulent style of crystal chandeliers sparkling in your home, you probably love all things luxurious and sumptuous! Commonly referred to, as “Luxe” details are the very essence of why we enjoy the finest of materials, fabrics, furniture and interior design style in our homes. Whether you are looking to bring a few luxe details to your interiors or you want to go all out, here’s 10 simple ways to awaken your home with these gorgeous additions.

 

See attached.

 

For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

 

The term “luxe” describe luxury goods or goods of “high quality”. As such, it is a laudatory term.

 

“Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59 (holding THE BEST BEER IN AMERICA merely laudatory and descriptive of applicant’s beer and ale being of superior quality); TMEP §1209.03(k).  In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.

 

Accordingly, the examining attorney has refused registration on the Principal Register under Section 2(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Amendment to Supplemental Register + Intent-to-Use Advisory – Amendment is Not Permitted Until Acceptable Allegation of Use (AAU) is Filed 

 

Although an amendment to the Supplemental Register would normally be an appropriate response to the 2(e)(1) refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

Benefits of the Supplemental Register

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)        Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)        Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)        Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)        Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)        Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Identification of Goods – Clarification Needed

 

Certain goods in the identification of goods are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Specifically,

 

(1)   “Tableware” must be further specified.  E.g. Tableware, namely, knives, forks and spoons, in Class 8.  Or “Coffee services in the nature of tableware” in Class 21.

(2)     “Household décor” must be further specified. E.g. Household décor, namely, pillows, accent pillows, in Class 20.  Or “Household décor, namely, ornaments made primarily of textiles and also including beads” in Class 20.

(3)   The “storage and organization” phrase must be further clarified e.g. “Storage and organization systems comprising shelves, drawers, cupboards, baskets and clothes rods, sold as a unit” in Class 20.  Or “storage racks” in Class 20.

(4)   “Barware” must be further clarified e.g. beer glasses, cocktail glasses, drinking glasses and shot glasses, in Class 21.  Or “Barware, namely, jiggers” in Class 9.

(5)   “Bedding must be further clarified e.g. bed linen, bed sheets, bed blankets and bed spreads, in Class 24.

 

Applicant may adopt six (6) or more of the following identifications (from above or below), if accurate: 

 

Candles, in Class 4;

 

Tableware, namely, knives, forks and spoons, in Class 8;

 

Furniture for house, office and garden; household décor, namely, ________ [further specify e.g. pillows, accent pillows, ornaments made primarily of textiles and also including beads]; storage and organization systems comprising shelves, drawers, cupboards, baskets and clothes rods, sold as a unit; storage racks; Prefabricated closet organization systems, in Class 20;

 

Dinnerware; barware, namely, _______ [further specify e.g. beer glasses, cocktail glasses, drinking glasses and shot glasses]; beverage glassware, in Class 21;

 

Bedding, namely, ________ [further specify e.g. bed linen, bed sheets, bed blankets and bed spreads]; bath towels, in Class 24;

 

Rugs, in Class 27.

 

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 Available Online

 

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.

 

See attached Id listings re: “tableware” and “décor/decorations” - for acceptable identifications, level of specificity required and proper classification, as needed.

 

 

Requirements for a Multi-class Application Based on Intent-to-Use (Section 1(b))

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section(s) 1(b) and/or 44:

 

(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 and/or services that are classified in at least six (6) or more classes; however, applicant submitted a fee(s) sufficient for only six (6) class(es).  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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

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.    

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

(571) 272-9275

gina.fink@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 28, 2019 for

U.S. Trademark Application Serial No. 88589973

 

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. 

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

(571) 272-9275

gina.fink@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 28, 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.”