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:  December 12, 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
• Suspension Advisory – Prior-Filed Applications
• Specimen Refusal – Mark Not Shown Used in Association with Goods and Services
• Amended Identification of Services Required
• Amended Color Claim and Description of Mark Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3390988, 4304393, 4312094, 5364130, 5385308, and 5639675.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is NEXGEN stylized and with a background design for the following relevant goods and services to which are subjects to this refusal:

·       “All-purpose cleaners”;

·       “Stickers”;

·       “Hats; Pants; Shirts”; and

·       “On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring subscription boxes containing Discounts, free shipping, VIP access; On-line retail store services featuring Home Delivery; Retail general store services; Retail variety stores.”

 

The cited marks are the following:

• U.S. Reg. No. 3390988 – NEXGEN stylized for “motorcycle apparel and wearing accessories, namely, leather and nylon jackets, vests, pants. dusters, chaps, shirts”;
• U.S. Reg. No. 4304393 – NEXTGEN in standard characters for the relevant goods, “Appliques in the form of decals”;
• U.S. Reg. No. 4312094 – NEXTGEN stylized for the relevant goods, “Appliques in the form of decals”;
• U.S. Reg. No. 5364130 – NEXGEN in standard characters for “Cleaner for use on airport runways”;
• U.S. Reg. No. 5385308 – NEXTGEN BIOMATERIALS in standard characters for “Wholesale, online retail and retail store services featuring dental and medical biomaterials including centrifuges, bone grafts, barrier membranes, dental implants, surgical instruments, bone morphogenetic proteins, lasers, growth factors and other related products”; and
• U.S. Reg. No. 5639675 – NEXTGEN OUTDOORS with a design for “Retail apparel stores; Retail clothing stores; Retail department stores; Retail outlets featuring apparel for sports and outdoor use; Retail store services featuring a wide variety of consumer goods of others; Retail store services featuring apparel for sports and outdoor use; Retail variety stores; On-line retail department store services.”

 

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

 

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).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).  In the present case, the applied-for mark and the marks in registration nos. 3390988 and 5364130 share the identical compound term NEXGEN, and the applied-for mark and the registration nos. 4304393, 431209, 5385308, and 5639675 share the nearly identical compound terms NEXGEN and NEXTGEN.

 

Moreover, the shared compound words between the applied-for mark and the mark in registration numbers 4304393, 431209, 5385308, and 5639675 are likely to be pronounced identically.  The only difference between the compared terms is that the registered marks adds the letter “T” at the end of the term “NEX,” creating NEXTGEN as opposed to the applied-for mark NEXGEN.  However, the attached article, Dropping T’s in Words like “Kitten,” “Vermont” and “important” is a Normal Speech Pattern, and there’s Even a Name for It:  T-Glottalization!, explains how “T” is commonly dropped in the pronunciation of words.  As such, the shared terms in 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).

 

Furthermore, the shared term between the applied-for mark and registration numbers 5385308 and 5639675 are the dominant term because the registered marks begin with the shared terms.  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”).

 

Finally, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Here, the marks have identical or nearly identical terms, which creates a greater commercial impression upon consumers.

 

Therefore, the marks are confusingly similar.

 

Comparison of the Goods and Services

 

The goods and/or services 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 and/or services 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)).  

 

When comparing the services with registration numbers 5385308 and 5639675, the application uses broad wording to describe the following services:  on-line retails store services that do not specify what is being sold in the stores such as, on-line retail store services featuring a wide variety of consumer goods of others, on-line retail store services featuring subscription boxes containing discounts, free shipping, VIP access, and on-line retail store services featuring home delivery; retail general store services and retail variety stores.  These identified services presumably encompasses all services of the type described, including registrants’ more narrow online retail store services featuring dental and medical biomaterials including centrifuges, bone grafts, barrier membranes, dental implants, surgical instruments, bone morphogenetic proteins, lasers, growth factors and other related products, as well as, retail variety stores and on-line retail department store services.  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).  Thus, applicant’s and registrants’ services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

When comparing the goods with registration number 3390988, the application uses broad wording to describe pants and shirts, which presumably encompasses all goods of the type described, including registrant’s more narrow motorcycle apparel and wearing accessories, namely, pants and shirts.  See, e.g., In re Solid State Design Inc., 125 USPQ2d at 1412-15; Sw. Mgmt., Inc., 115 USPQ2d at 1025.  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d at 1629 (citing Tuxedo Monopoly, Inc., 648 F.2d at 1336, 209 USPQ at 988; Inter IKEA Sys. B.V., 110 USPQ2d at 1745; Baseball Am. Inc.., 71 USPQ2d at 1847 n.9).

 

When comparing the goods with registration number 5364130, the application uses broad wording to describe all-purpose cleaner, which presumably encompasses all goods of the type described, including registrant’s narrower cleaner for use on airport runways.  See, e.g., In re Solid State Design Inc., 125 USPQ2d at 1412-15; Sw. Mgmt., Inc., 115 USPQ2d at 1025.  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d at 1629 (citing Tuxedo Monopoly, Inc., 648 F.2d at 1336, 209 USPQ at 988; Inter IKEA Sys. B.V., 110 USPQ2d at 1745; Baseball Am. Inc.., 71 USPQ2d at 1847 n.9).

 

Additionally, the goods and/or services 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 registrants’ goods and/or services are related.

 

Moreover, the compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Consumers are likely to believe that applicant’s hats emanate from the same source as 3390988 registrant’s motorcycle pants or shirts, and that applicant’s stickers emanate from the same source as appliques in the form of decals in registration numbers 4304393 and 4312094.  The attached Internet evidence, consisting of third-party websites, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark.  For example, Highway21, ScoprionExo, and Speed and Strength produce and market hats along with motorcycle pants or shirts under the same marks.  Similarly, Casual Industrees, RoomMates, and Carstickers produce and market applicant’s types of goods, such as stickers, along with registrant’s types of goods, such as appliques in the form of decals under the same marks. Thus, applicant’s and registrants’ goods 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).

 

Accordingly, registration of the applied-for mark has been refused under Section 2(d) of the Trademark Act for a likelihood of confusion with the registered marks.

 

Applicant should note the following ground for suspension.

 

SUSPENSION ADVISORY – PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87409894, 87684117, 87908691, and 88614572 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 marks.  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.

 

SPECIMEN REFUSAL – MARK NOT SHOWN USED IN ASSOCIATION WITH GOODS AND SERVICES THIS PARTIAL REFUSAL APPLIES TO CLASSES 16, 25, AND 35 ONLY

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and services specified in International Classes 16, 25, and 35 in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).

 

With regards to International Classes 16 and 25, there is no specimen showing either stickers, sealing wax, hats, pants, or shirts.  The specimen is only of a label for ceramic spray, a type of good classified in International Class 3, not 16 and 25.  Therefore, the specimen fails to show the mark in use with the goods identified in International Class 16 and 25.

 

With regards to International Class 35, the specimen shows a screenshot with applicant’s website.  However, there is no option to purchase products or any indication explicitly or implicitly that retail or online retail store services are provided.  The specimen only appears to be promotional material for applicant’s ceramic spray.  Therefore, the specimen fails to show the mark in use with the services identified in International Class 35.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

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).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       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.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

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

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wordings “On-line retail store services featuring subscription boxes containing Discounts, free shipping, VIP access” and “On-line retail store services featuring Home Delivery” in the identification of services are indefinite and must be clarified because they do not specify the field or type of goods offered through those retail store services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.  Further, the wordings “Retail store services featuring green and eco-friendly products in the nature of care care products” and “Pop-up retail store services featuring care care products and detailing” appear to be misspelled and are thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate:

 

International Class 3:  Automotive cleaning preparations; Cleaner for use on automobile finishes; All-purpose cleaners; Automobile cleaners; Automobile wax; Automobile and car wax preparations; Emulsifying preparations for auto surfaces; Polishing wax; SPF sun block sprays; Spray cleaners for use on automobiles; Windshield cleaner fluids.

 

International Class 16:  Stickers; Sealing wax.

 

International Class 25:  Hats; Pants; Shirts.

 

International Class 35:  On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring subscription boxes containing {identify the products contained in the boxes, e.g., car care products, etc.} featuring discounts, free shipping, VIP access; On-line retail store services in the field of {specify item, e.g., car care products, etc.} featuring home delivery; Retail store services featuring convenience store items and gasoline; Retail store services featuring green and eco-friendly products in the nature of car care products; Retail store services featuring detailing products and automotive accessories; Retail stores featuring automotive accessories and cleaning products; Retail automobile parts and accessories stores; Retail convenience stores; Retail general store services; Retail variety stores; Pop-up retail store services featuring car care products and detailing.

 

Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods 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 or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

AMENDED COLOR CLAIM AND DESCRIPTION OF MARK REQUIRED

 

Applicant must clarify whether color is being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in particular colors; however, the description of the mark indicates that the colors can vary or change such that the mark may be used in color combinations different from those shown on the drawing.  The color claim further describes colors not in the drawing, such as red, pink, green, yellow, teal, purple, orange, violet, red-violet, red-orange, yellow-orange, yellow-green, and blue-green; however, the mark in the drawing only has white, blue, gray, and black.

 

An applicant may seek registration of only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01; see 15 U.S.C. §1051; In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516-17 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002).  A mark with a changeable or “phantom” element such as varying or changing colors is generally considered to be more than one mark.  See In re Hayes, 62 USPQ2d at 1445.  In addition to the requirement to select one mark, the colors in the drawing of the mark, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Applicant may clarify whether color is a feature of the mark by satisfying one of the following:

 

(1)       If applicant is not limiting the application to particular colors, applicant must submit a (a) new drawing of the mark in black and white only, with no other colors, (b) statement authorizing deletion of any color claim, if appropriate, and (c) description of the literal and design elements in the mark that omits any reference to color.  A registration for a mark with a black-and-white drawing covers depictions of the mark in all possible color combinations and is not limited to any particular color scheme.  See In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972); TMEP §807.14(e)(i).  In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq. 

 

The following description is suggested, if accurate:

 

The mark consists of the stylized wording “NEXGEN” with the “X” split in half, and a background containing hexagonal designs that have circles in each corner.

 

(2)       If applicant is limiting the application to particular colors, applicant must submit a (a) new drawing showing the mark in the specific colors for which registration is sought, or confirm that the original drawing shows the mark for which registration is sought, (b) an amended color claim and description of the mark that deletes the reference changeable or varying colors and restricts the color claim and description to only those colors in the new or original drawing, as appropriate.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors white, blue, black, and gray are claimed as a feature of the mark.”

 

Description:  “The mark consists of the word “NEXGEN” in stylized font with the “X” split in two half.  “NE” and “GEN” are in white, while the X is split with the lower half in blue and the upper half in white, and a gap in between.  The mark has a black background covered with gray outlined touching hexagons that have filled circles in their corners.”

 

See TMEP §807.07(a)(i)-(ii).

 

For more information about drawings and instructions on how to submit a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and 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 refusals and/or requirements 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. 

 

SUGGEST HIRING TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

 

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.    

 

 

/G. Iñaki Liñero Guarda/

G. Iñaki Liñero Guarda

Examining Attorney

Law Office 127

(571)270-1783

Gerardo.LineroGuarda@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 December 12, 2019 for

U.S. Trademark Application Serial No. 88596106

 

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. 

 

 

/G. Iñaki Liñero Guarda/

G. Iñaki Liñero Guarda

Examining Attorney

Law Office 127

(571)270-1783

Gerardo.LineroGuarda@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 December 12, 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.”