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 09, 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.

 

Partial Refusal

THIS PARTIAL REFUSAL APPLIES TO CLASS(ES) 21 ONLY

 

If applicant does not respond to this Office action within the six-month period for response, International Class(es) 21 will be deleted from the application.  The application will then proceed with International Class(es) 12, 16, 25 and 41 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5646784.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant applied to register the mark FLAGSHIP FOR AMERICA’S FUTURE for, “cups and mugs.”

 

The registered mark is FLAGSHIP and design for, “Toilet paper holders; Kitchen utensils, namely, serving scoops, kitchen tongs, splatter screens; Coffee services in the nature of tableware; Trivets; Baskets for domestic use, namely, bread baskets for domestic use; clothes racks, for drying; Towel rails and rings; Bread baskets for domestic use; Napkin holders; Containers for household or kitchen use; Cups; urns; Tableware, other than knives, forks and spoons, namely, Tea services in the nature of tableware; Jugs; Kitchen containers; Drinking bottles for sports.”

 

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).

 

In this case, applicant’s mark FLAGSHIP FOR AMERICA’S FUTURE is similar to the registered mark FLAGSHIP and design because of the common use of the word FLAGSHIP in both of the marks. As such, the marks look alike and sound alike when spoken.

 

COMPARISON OF THE GOODS

The compared goods and/or services 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).

 

In this case, applicant’s goods and the registrant’s goods both include “cups.” Accordingly, consumers encountering applicant’s goods would mistakenly believe the goods originate from a common source.

 

The remaining goods in registrant’s class 21 are also related to applicant’s “cups and mugs” because as the attached Internet stories show, these goods are all considered “household items” and are sold together online and in stores.

 

Registration is therefore refused under Section 2d.

 

Identification of Goods

The identification of goods is indefinite and must be clarified because some of the wording is too broad and must be clarified. Additionally, some of the wording is possibly misclassified. For example, “license plates” is too broad. License plates themselves are in class 6, and must be written as “metal license plates.” License plate fasteners, frames and holders” are in class 12. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Metal license plates, in class 6;

 

License plate fasteners; license plate frames and license plate holders, in class 12;

 

Clothing, namely, [specify ex. shirts, pants, etc.], in class 25.

 

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).

 

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.

 

Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services.  See Nice Classification, 11th ed., version 2019 (Nice 11-2019).  Applications filed on or after January 1, 2019 must comply with this new version.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new version, the entire identification must comply with this version.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries.  See TMEP §1402.04.

 

Note: The goods in class 21 are acceptable as written.

 

Identification of Services

The identification of services is indefinite and must be clarified because some of the wording is too broad and must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Entertainment and educational services, namely, providing courses of instruction at the university level and distribution of course material in connection therewith; arranging and conducting athletic competitions; athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races;  athletic events, entertainment in the nature of [specify the sport] tournaments; athletic tournaments, and athletic exhibitions, in class 41;

 

Arena services, namely, providing general purpose facilities for sports, concerts, conventions and exhibitions, in class 43.

 

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).

 

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.

 

Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services.  See Nice Classification, 11th ed., version 2019 (Nice 11-2019).  Applications filed on or after January 1, 2019 must comply with this new version.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new version, the entire identification must comply with this version.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries.  See TMEP §1402.04.

 

Insufficient Fee

The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted a fee(s) sufficient for only five class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS).  See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).

 

Disclaimer

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “AMERICA’S” in the mark because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary evidence shows this wording AMERICA refers to the United States of America, which is defined as a “country (a federal republic) in North America bordering on the Atlantic, Pacific, and Arctic oceans.” As such, AMERICA is a geographic location, and must be disclaimed because it describes where applicant’s goods and services originate.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “AMERICA’S” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Prior Pending Application

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 88514950 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two 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 application.

 

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 mark in the referenced application.  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.

 

 

Telephone for Clarification Recommended

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.    

 

 

/Inga Ervin/

Trademark Examining Attorney

Law Office 111

United States Patent & Trademark Office

571-272-9379

571-273-9379(fax)

Inga.Ervin@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 09, 2019 for

U.S. Trademark Application Serial No. 88603472

 

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. 

 

 

Ervin, Inga

/Inga Ervin/

Trademark Examining Attorney

Law Office 111

United States Patent & Trademark Office

571-272-9379

571-273-937

 

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 09, 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.”