To: | CUESTIX, INC. (steve@fourreasonslegal.com) |
Subject: | U.S. Trademark Application Serial No. 88639245 - SUMMIT - N/A |
Sent: | December 30, 2019 05:03:12 PM |
Sent As: | ecom126@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88639245
Mark: SUMMIT
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Correspondence Address:
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Applicant: CUESTIX, 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 30, 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 that Applicant Must Address:
PRIOR-FILED APPLICATIONS ADVISORY
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.
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
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. 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
The applied-for mark is “SUMMIT” in standard character form.
The cited mark in U.S. Registration No. 4726017 is “SUMMIT” in standard character form.
In the present case, applicant’s mark is “SUMMIT” and registrant’s mark is “SUMMIT”. 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. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
Applicant’s goods are closely related to registrant’s goods under Section 2(d) of the Trademark Act. The goods 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).
The identified goods in the applied-for mark are “cue sticks; pool cues; billiard cues; pool cue cases; cases for billiard cues; billiard gloves; billiard equipment; pool cue repair kits; pool chalk holders; pool cue tip grooming tools; billiard cue tip grooming tools; pool cue tip maintenance t” in International Class 28.
The identified goods in U.S. Registration No. 4726017 are “games and playthings, namely, skateboards and skateboard decks; gymnastic and sporting articles not included in other classes, namely, hockey sticks, leg guards for wear when playing hockey, sports bags specifically adapted to contain hockey sticks, abdominal guards for wear when playing hockey, arm guards for wear when playing hockey, chest guards for wear when playing hockey, goalkeeping pads for wear when playing hockey, gloves for wear when playing hockey, leg guards for wear when playing soccer, baseball bats, softball bats, basketball hoops, basketball nets, boxing gloves and punching bags, netball positional patches, namely, chest bibs; sports equipment for use in training for the game of rugby, namely, tackling bags and tackling pads; sports bags specifically adapted to contain sporting equipment; nets for sporting ball games, namely, hockey nets, portable hockey nets, soccer goal nets and portable soccer goal nets; sport balls, namely, footballs, Australian rules footballs, rugby league footballs, netballs, soccer balls, basketballs, hockey balls, cricket balls, baseballs and softballs; apparatus and articles for use in playing the game of cricket, namely, bats, balls, batting gloves, wicket-keeping gloves, cricket stumps, cricket bails, cricket helmets, abdominal guards, arm guards, chest guards, leg batting pads, thigh pads and cricket training aids, namely, nets for catching balls; bags specifically adapted to hold cricket equipment; apparatus and articles for use in playing the game of rugby, namely, balls, shoulder guards, chest guards, shin guards and mouth guards” in International Class 28.
Here, applicant’s and registrant’s identified goods clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record. Evidence attached herein from the following sources demonstrates that the same source commonly offers, produces, manufactures, or sells billiard and pool supplies of applicant and sports supplies of registrant:
- Academy, selling pool supplies and various sports supplies. http://www.academy.com/shop/browse/cue-sticks--cases, http://www.academy.com/shop/browse/sports
- Applicant, selling various gameroom supplies in addition to pool supplies. http://cuestix.com/gameroom-supplies.html
- Escalade Sports, selling pool supplies and various sports supplies. http://www.escaladesports.com/category/billiards/cues/, http://www.escaladesports.com/category
- SportsDirect.com, selling pool supplies and various sports supplies. http://us.sportsdirect.com/snooker-and-pool/pool-cues, http://us.sportsdirect.com/
Based on the analysis above, applicant’s goods are closely related to registrant’s goods.
Section 2(d) Refusal Summary
In total, the parties’ marks are confusingly similar in overall commercial impression because they are identical. Applicant’s and registrant’s goods are commercially related and are available in the same trade channels because as shown by the evidence. Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIREMENT
Applicant has classified the following goods in International Class 28: “pool cue tip grooming tools; billiard cue tip grooming tools; pool cue tip maintenance tools.” However, the proper classification for these items is in Class 8, under hand-operated tools for grooming billiard cue tips.
Additionally, applicant has provided the application fee for only 1 international class. Thus, not all international classes in the application are covered by the application fee. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):
Class 8: Hand-operated tools for grooming billiard cue tips, namely, pool cue tip grooming tools, billiard cue tip grooming tools, and pool cue tip maintenance tools
Class 28: Cue sticks; pool cues; billiard cues; pool cue cases; cases for billiard cues; billiard gloves; billiard equipment; pool cue repair kits; pool chalk holders;
pool cue tip grooming tools; billiard cue tip grooming tools; pool cue tip maintenance tools
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.
ADVISORY ON MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods 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 2 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 28; and applicant needs a specimen for Class 8. 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).
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.
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. 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.
/D. Zarick/
D. Zarick
Trademark Examining Attorney
Law Office 126
(571) 270-5013
diana.zarick@uspto.gov
RESPONSE GUIDANCE