To: | FR & GV Enterprises, Inc. (msolis@msolislaw.com) |
Subject: | U.S. Trademark Application Serial No. 88604202 - OBSIDIAN - N/A |
Sent: | December 10, 2019 03:30:53 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88604202
Mark: OBSIDIAN
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Correspondence Address: |
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Applicant: FR & GV Enterprises, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 10, 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.
REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION
The applied-for mark is OBSIDIAN with a design element for use in connection with “backpacks and bags” in International Class 18. The registered marks are OBSIDIAN in standard characters for use in connection with “retail online and subscription-based mail order fulfillment services featuring product offerings tailored to outdoor lifestyle enthusiasts, namely, varying assortments of recreational equipment and related accessories, outdoor lifestyle promotional materials, and foods, beverages and sundries of interest to outdoor lifestyle enthusiasts” in International Class 35 (U.S. Registration No. 5094212) and OBSIDIAN with a design element for use in connection with “fashion sunglasses, fashion sunglass cases, fashion eyeglasses, fashion eyeglass cases” in International Class 9 (U.S. Registration No. 5852576).
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 the present case, applicant’s mark is OBSIDIAN with a design element and registrants’ marks are OBSIDIAN in standard characters and OBSIDIAN with a design element. These literal elements of 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 the literal elements 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.
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)). Both the applied-for mark and the mark in U.S. Registration No. 5852576 feature minimal additional design elements. The applied-for mark features a stylized letter “O” and Registration No. 5852576 features a shaded half circle above the wording of the mark. These minimal additions do not sufficiently distinguish the two marks.
Therefore, the marks are confusingly similar.
Similarity of the Goods and/or Services
Again, applicant’s goods are “backpacks and bags” in International Class 18. Registrant Cairn, Inc.’s services are “retail online and subscription-based mail order fulfillment services featuring product offerings tailored to outdoor lifestyle enthusiasts, namely, varying assortments of recreational equipment and related accessories, outdoor lifestyle promotional materials, and foods, beverages and sundries of interest to outdoor lifestyle enthusiasts. Registrant Amazon Technologies, Inc.’s goods are “fashion sunglasses, fashion sunglass cases, fashion eyeglasses, fashion eyeglass cases” in International Class 9.
Backpacks and Bags v. Cairn, Inc.’s Services
Applicant produces backpacks and bags, while registrant provides subscription-based retail and fulfillment services in which it provides boxes to consumers containing various outdoor recreation goods. The attached Internet evidence from Alpha Outpost®, BattleBox, and Cairn® establishes that it is common for such outdoor recreation subscription boxes to include backpacks and bags. For example, the evidence from Alpha Outpost® shows a previously-sent box that contained a “compact backpack.” Notably, the attached evidence from the registrant, Cairn®, shows a backpack in the OBSIDIAN box. Thus, this evidence shows that consumers purchasing such subscription-based boxes would be accustomed to receiving backpacks and/or bags in the boxes. Registrant’s services, then, feature applicant’s identified goods.
The goods and services are therefore related for purposes of likelihood of confusion.
Backpacks and Bags v. Sunglasses and Eyeglasses
Conclusion
Considering the above, the marks are confusingly similar and registration is refused pursuant to Trademark Act Section 2(d). Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below. Applicant should also note the following potential additional ground for refusal of registration.
POTENTIAL REFUSAL: PRIOR-FILED PENDING 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.
Applicant should note the following additional requirements.
REQUIREMENT: IDENTIFICATION AND CLASSIFCIATION OF GOODS
Applicant may substitute the following wording, if accurate:
Class 3: Toiletry bags sold filled with non-medicated toiletry preparations, namely, _____ {indicate type of toiletry, e.g., soap, shampoo, and hair conditioner}
Class 5: Toiletry bags sold filled with medicated toiletry preparations, namely, _____ {indicate type of medicate toiletry, e.g., soap, shampoo, and hair conditioner}
Class 8: Bags specially adapted for holding or carrying _____ {specify goods in International Class 8, e.g., hair cutting scissors and non-electric curling irons}
Class 9: Bags specially adapted for _____ {specify goods in International Class 9, e.g., protective helmets, laptops, and computers}
Class 10: Bags for medical waste
Class 11: Bags specially adapted for carrying hand-held electric hair dryers
Class 12: Bags specially adapted to hold _____ {specify goods in International Class 12, e.g., rifles and pushchairs}
Class 16: Plastic garbage bags, garbage bags of paper
Class 18: Duffel bags
Class 22: Cloth bags for laundry
Class 28: Bags specially adapted for handheld video games
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.
Applicant should note the multiple-class application requirements below.
REQUIREMENT: MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least 11 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 18; and applicant needs specimens for classes 3, 5, 8, 9, 10, 11, 12, 16, 22 and 28. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
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.
/Nathan C. Ranns/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 128
Phone: (571) 270-3776
Nathan.Ranns@uspto.gov
RESPONSE GUIDANCE