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:  February 03, 2020

 

 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.

 

Issue Summary

 

2(d) refusal

 

Identification of goods and services

 

Multiple class application requirements

 

Amended color claim/Description of the mark/color location statement

 

Likelihood of confusion refusal under Section 2(d)

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4403651; 3813904; 4760884; 3496753; 4627029; 4679535; 53224509; 4877731; and 4869024.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

Confusing similarity 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).

 

Applicant’s mark is HUB in black letters on an orange rectangle on a larger black rectangle. 

 

The marks of the cited registrations are:

 

Mark                            Registration No.                                  Goods and Services

 

MY HUB                    4403651                                              Pillows; Bed blankets, bed sheets, pillow cases, blanket throws, pillow shams, and shams

 

HUB BUB                  3813904                                              Coffee

 

HUB BUB                  4760884                                              Tea and ice cream

 

HUB Restaurant         4627029                                              Restaurant services

Ice Creamery

On Duty

 

HUB PUB                   4679535                                              Bar, restaurant services

 

HUB BUB                  4869024                                              Bar, restaurant services

 

HUB 51                       3496753                                              Restaurant services

 

HUB STREAT            5324509                                              Bar, restaurant services

 

HOOKAH HUB         4847731                                              Hookahs and hookah accessories, namely, hookah bowls, hookah stems, hookah vases and hookah hoses

 

The most significant and only literal element of applicant’s mark is the word HUB.  The colored rectangles are of little trademark significance as they appear only as background carriers for the word HUB.  In, each of the cited marks, the word HUB is either the first or most prominent portion.  The marks HOOKAH HUB, HUB PUB, and HUB RESTAURANT ICE CREAMERY each combines the word HUB with descriptive terminology which describes the nature of the goods and services for which the mark is used.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence from the online Merriam-Webster Dictionary shows that the wording PUB, HOOKAH, and RESTAURANT in those registered marks are merely descriptive of or generic for the registrant’s goods or services.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording HUB the more dominant element of the mark.

 

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).

 

Closely related nature of the goods and services

 

The compared goods and 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 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).

 

Applicant’s goods and services include:

 

Towels, pillows, pillow covers, bed and bath linen in International Class 24.

 

Milk and milk products in International Class 29.

 

Ices, Coffee and tea in International Class 30.

 

Electronic cigarettes; cartridges sold with propylene glycol for electronic cigarettes in International Class 34.

 

Restaurants and bar services in International Class 43.

 

The registrants uses their marks in connection with pillows, bed blankets, sheets, and pillow covers; coffee, tea, and ice cream; Hookahs and hookah accessories, namely, hookah bowls, hookah stems, hookah vases and hookah hoses; and bar and restaurant services.  The goods and services being compared are identical in regard to the coffee, tea, pillows, pillow covers and cases and bar and restaurant services.

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely hookahs and parts therefor and electronic cigarettes and cartridges, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

The stated refusal refers to International Classes 24, 29, 30, 34 and 43 only and does not bar registration in the other classes.  The “pillows” improperly classified in International Class 24 and properly classified in International Class 20 are included in the above refusal.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the classes (and goods) to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for such classes, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods and services

 

The identification of goods and services is unacceptable and must be clarified because it contains goods which are classified in different Classes than those of record and indefinite terminology and lacks the subject matter and common commercial name of many items.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods and services have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording with required changes in bold, if accurate: 

 

International Class 5

 

Gels for use as personal lubricants; sexual stimulant gels and topical preparations, namely, gels for enhancing sexual arousal, enjoyment and response

 

International Class 9

Mobile phone cases; pre-recorded films, video tapes and video disks all featuring adult entertainment; electronic publications, namely, [indicate specific type of publication, e.g., magazines all featuring adult entertainment]; mouse mats; sunglasses; downloadable computer game software; Downloadable computer application software for mobile phones, tablets, portable media players, and handheld computers, namely, software for use in anonymous browsing, encryption, anti-tracking protection, network protection, privacy protection, data compression, and data leakage prevention; magnets; stands for mobile phones

International Class 10

Sex toys

International Class 14

Clocks; key rings; key cases

International Class 16

Printed matter, namely, tickets, invitations, and posters; stationery; writing implements; calendars, diaries, personal organisers;  photographs; goods of paper, card and cardboard, namely, beer mats, coasters, napkins and serviettes, paper table cloths; Promotional decals; pens, pencils, calendars; event programs; paper gift cards; stickers

International Class 18

Tote bags; messenger bags; duffel bags; cases; leather and imitation leather; skins and hides; umbrellas; parasols; walking sticks; billfolds; wallets; purses; brief case type portfolios; whips; harness; business card cases; and key cases

International Class 20

Pillows

International Class 21

Mugs; water bottles sold empty; porcelain mugs; cups; dishware; earthenware mugs

International Class 24

Towels; pillows; pillow covers; canvas fabric; bed linen; kitchen linen; table linen; bath linen

International Class 25

Clothing, namely, T-shirts, pants, headwear, knit caps, baseball caps, hats, footwear, sandals, boots, dresses, shorts, sweatshirts, underwear, bras, panties, lingerie, boxer shorts, briefs, polo shirts, tank tops, hoodies, sleepwear, pajamas, nightgowns and robes

International Class 26

Cloth clothing patches; ornamental cloth patches; hair pins; hair ornaments in the form of combs; ornamental novelty badges; feathers for ornamentation; novelty buttons; shoe trimmings  

International Class 28

Playing cards; trading cards for games; video game machines for use with television; parlour games

International Class 29

Meat; fish; poultry; game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies; jams; compotes; eggs; milk; milk products excluding ice cream, ice milk, and frozen yogurt; edible oils; edible fats

International Class 30

Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparation made from cereals, namely, [indicate specific items]; bread; pastry and confectionery made of sugar; edible ices; honey; treacle; yeast; baking-powders; salt; mustard; vinegar; sauces; condiments, namely, ketchup and salsa; spices; ice

International Class 34

Electronic cigarettes; cartridges sold filled with propylene glycol for electronic cigarettes

International Class 35

Online retail store services featuring sexual stimulant gels, mobile phone cases, downloadable videos in the field of adult entertainment, sex toys, backpacks, tote bags, messenger bags, duffel bags, mugs, empty water bottles, clothing and headwear; computerized online ordering featuring sexual stimulant gels, mobile phone cases, downloadable videos in the field of adult entertainment, sex toys, backpacks, tote bags, messenger bags, duffel bags, mugs, empty water bottles, clothing and headwear; marketing services; sales demonstrations for others; promoting the sale of goods and services by [specify means, e.g., awarding purchase points for credit card use, distributing coupons]; modeling services

International Class 38

Video-on-demand transmission services; video broadcasting; electronic, electric, and digital transmission of voice, data, and images all in the field of adult entertainment; telecommunication services, namely, cellular telephone services; radio and television broadcasting; streaming audio and video material, namely, music, movies, television shows, music videos, news and sports webcasts on the internet

International Class 41

Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of adult entertainment via a global computer network; special event planning for social entertainment purposes; entertainment services, namely, providing a website for on-line gambling; providing information relating to organizing community sporting and cultural activities

International Class 42

Providing a website allowing users to download videos

International Class 43

Restaurants; bar services

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Multiple class application requirements

 

The application identifies goods and/or services that are classified in at least 20 classes; however, applicant submitted a fee(s) sufficient for only 19 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 application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 20 classes; however, applicant submitted a fee(s) sufficient for only 19 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Amended color claim/Description of the mark/color location statement

 

Applicant must clarify the colors that are 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 the colors black and orange; however, the following colors appear in the color claim black, white, and orange. 

 

Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

To clarify the colors in the mark, applicant may satisfy one of the following:

 

(1)        Submit a new color drawing that shows the mark in the colors specified in the color claim.  TMEP §807.07(c).  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.

 

(2)        Submit an amended color claim/description/color claim and description that matches the colors in the drawing.  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 amended description of the mark/color location statement are suggested:

 

Color claim:  “The colors black and orange are claimed as a feature of the mark.”

 

Description:  “The mark consists of the word "HUB" in stylized font whereby the word "HUB" appears in the color black within an orange rectangle featuring rounded corners, all displayed against a black field.

 

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

 

RESPONSE TO OFFICE ACTION

 

Response guidelines.  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.

 

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.    

 

 

/John E. Michos/

Trademark Attorney

USPTO

Law Office 118

571 272 9197

john.michos@uspto.gov (informal inquiries only)

 

 

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 February 03, 2020 for

U.S. Trademark Application Serial No. 88666414

 

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. 

 

 

/John E. Michos/

Trademark Attorney

USPTO

Law Office 118

571 272 9197

john.michos@uspto.gov (informal inquiries only)

 

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 February 03, 2020, 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.”