To: | Jones, Jeffrey (stages1@live.com) |
Subject: | U.S. Trademark Application Serial No. 88610668 - THE BOXX - N/A |
Sent: | December 11, 2019 05:31:21 PM |
Sent As: | ecom106@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 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88610668
Mark: THE BOXX
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Correspondence Address:
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Applicant: Jones, Jeffrey
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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 11, 2019
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Likelihood of confusion refusal
n Descriptiveness refusal
n Requirement to amend the description and classification of goods and services
n Requirement to comply with classification requirements
LIKELIHOOD OF CONFUSION
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.
The Marks at Issue
The applicant’s mark is THE BOXX for: Computer hardware; computer networking hardware; set top boxes; digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content.
The registered mark is THE BOX for: Electronic equipment, namely, microphone preamps, audio equalizers, audio compressors for processing audio signals, and audio mixing consoles, namely, audio mixer consoles.
The Marks are Highly Similar
The applicant’s mark contains the word BOXX, with an extra X at the end. Adding this extra letter does not change the pronunciation or commercial impression of the word BOX.
The Goods are Closely Related
The registrant’s goods include electronic microphone preamps, audio equalizers, audio compressors for processing audio signals, and audio mixing consoles, namely, audio mixer consoles. The applicant’s goods include digital electronic devices for recording, manipulating, playing and reviewing audio and video files, as well as hardware and software for similar functions. The applicant’s “digital electronic devices” are broad enough to encompass the registrant’s equalizers, compressors and mixer consoles.
In this case, the application uses broad wording to describe the digital electronic devices listed above, which presumably encompasses all goods of the type described, including registrant’s more narrow equalizers, compressors and mixer consoles. 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 registrant’s goods 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)).
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 registrant’s goods and/or services are related.
Since the marks are substantially the same and the goods are closely related, consumers are likely to believe the goods of the applicant and registrant come from the same source. Therefore, registration is refused under Section 2(d) of the Trademark Act.
Please note the following additional ground for refusal.
DESCRIPTIVENESS REFUSAL
The applicant’s mark is THE BOXX for: Computer hardware; computer networking hardware; set top boxes; digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content.
The proposed mark is merely descriptive of the goods because it tells consumers that the applicant’s goods comprise a box, as that term is used descriptively in the industry.
BOX is defined as follows in the computer industry:
A computer; especially in the construction "foo box" where foo is some functional qualifier, like "graphics", or the name of an operating system (thus, "Unix box", "MS-DOS box", etc.) "We preprocess the data on Unix boxes before handing it up to the mainframe." The plural "boxen" is sometimes seen. http://www.computer-dictionary-online.org/definitions-b/box.html
Alternatively referred to as a box, main unit, and system box, a system unit is the case that contains all the main parts of a computer. Below is a picture of a computer with each of the main components that help make up a computer. In the picture, you can see the system unit, flat-panel display, speakers, keyboard, and mouse. We've also labeled each of the input devices and output devices. http://www.computerhope.com/jargon/s/system-unit.htm
A signaling device enclosed in a casing: an alarm box. http://www.ahdictionary.com/word/search.html?q=box
The applicant’s goods include computer hardware, set top BOXES, and other digital electronic devices that are broad enough to include boxes within the above definitions. Therefore, the description of goods is broad enough to include “boxes” of the types defined herein as common industry terms.
The examining attorney has attached sample registrations from the Office’s database of registered marks wherein BOX was disclaimed for related goods, which shows descriptive, and possibly generic, industry use of this term with related goods/services.
Therefore, registration is refused on the Principal Register on the basis of descriptiveness.
GOODS AND SERVICES
The wording noted below in the identification of goods and services is indefinite and must be clarified because its nature is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods/services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may substitute the following wording, if accurate. Suggested changes and additions are in bold and items the applicant must clarify are in italics.
Class 9: Computer hardware; computer networking hardware; set top boxes; digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files; (indicate format, downloadable or recorded) computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; computer hardware and (indicate format, downloadable or recorded) computer software for the reproduction, processing and streaming of audio, video and multimedia content; computer hardware and (indicate format, downloadable or recorded) software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content
Class 42: providing temporary use of online, nondownloadable computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files; providing temporary use of online, nondownloadable computer software for the reproduction, processing and streaming of audio, video and multimedia content; providing temporary use of online, nondownloadable software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content
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.
CLASSIFICATION
(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(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). 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 9. The applicant needs a specimen for Class 42 is this class is added to the application. 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.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(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.
FEES
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Response Guidelines
How to respond. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Legal assistance. 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.
Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees. These companies often have names similar to the USPTO. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.” For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.
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.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@uspto.gov
RESPONSE GUIDANCE