NOTE TO THE FILE
SERIAL NUMBER: 88834582
DATE: 06/06/2020
NAME: jkelly
NOTE:
From: Kelly, John
Sent: Saturday, June 6, 2020 4:24 PM
To: Monica Awadalla <monica.awadalla@gmail.com>
Subject: RE: U.S. Trademark Application Serial No. 88834582 - MONARK - N/A (informal communication)
Dear Monica Awadalla:
This is an informal communication in response to your e-mail below which is considered an informal communication and will be included in the application record.
I have reviewed your informal arguments against the Section 2(d) refusal. For the reasons below, they are found to be unpersuasive.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
The marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Applicant’s claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv).
The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
***Please keep in mind that the USPTO does not accept emails as responses to Office actions. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Therefore, the USPTO must still receive your official response to the office action within six months or the application will be abandoned. The response should be sent via the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of the Office action.
Kind regards,
/John M. C. Kelly/
Trademark Examining Attorney
Law Office 119
571-272-9412
From: Monica Awadalla <monica.awadalla@gmail.com>
Sent: Saturday, June 6, 2020 3:59 PM
To: Kelly, John <John.Kelly@USPTO.GOV>
Subject: Re: U.S. Trademark Application Serial No. 88834582 - MONARK - N/A
Dear Mr. Kelly,
Thank you so much for your letter.
Since I am representing myself as the owner of this mark, please bear with me as I try to respond.
In terms of the accurate and complete description of the mark, your suggestion is perfect: The mark consists of the stylized wording "MONARK" with a design consisting of overlapping diamond shapes to the left.
In terms of the other mark you raised (Monarque) there are large differences in the appearance, connotation and commercial impression after viewing the marks.
In terms of the appearance and connotation, the other mark is presented with a butterfly and their original application was for Monarch (like the monarch butterfly). That is the meaning and connotation that they are going for.
They use a bright red bubble letter font and a large butterfly symbol next to their name.
Our mark is completely different. Our mark, which we have been using since 2014 (which pre-dates the use of their mark) is a combination of the first half of my name (Monica) and the last part of my husband's name (Mark) -- MON and ARK. This is our family business and our mark has a complete different spelling, appearance, look, feel, and connotation.
Our logo is always used with the overlapping diamond shapes, is always in black, uses a very modern and minimalistic font and has a very different feel and connotation.
Furthermore, we have very different products. Their product line is famous artwork put onto wallets and cases. See below -- their products are reproductions of Van Gogh, O'Keeffe, Klimt, and other masterpieces reprinted onto wallets and cases.
Our products are all tempered glass screen protectors, which when put side by side would never be confused -- and in fact would never be put side by side as I will explain further below.
Moreover, I looked EVERYWHERE and cannot find a single product in which their mark is actually displayed on the product or even shows packaging with their mark. Our products are NEVER sold or marketed without our mark prominently displayed on the packaging, and in all marketing which further reduces any possible confusion.
Furthermore, our products will be sold in Dollar Tree later this year by way of example --- while their products are marketed to a very high end demographic as "fine art" pieces --- they are selling to a totally separate clientele than we do.
Therefore, in every aspect -- in terms of the appearance of our marks, the connotation and meaning related to our marks as a whole and the way they are applied to our goods, the commercial impression that a consumer gets when they look at our products and our marks on the products (even though they don't use their mark on the goods as we do), all of these aspects are sufficiently different such that consumers would never be confused that we are the same brand or even possibly related.
For these reasons, I would very kindly ask that you allow our mark to proceed. I look forward to your response.
With kindest regards,
Monica Awadalla
On Sat, Jun 6, 2020 at 10:48 AM ecom119 <ecom119@uspto.gov> wrote:
United States Patent and Trademark Office (USPTO)
USPTO OFFICIAL NOTICE
Office Action (Official Letter) has issued
U.S. Trademark Application Serial No. 88834582
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.
(2) Direct questions about the contents of the Office action to the assigned attorney below.
/John M.C. Kelly/
John M.C. Kelly
Examining Attorney
Law Office 119
571-272-9412
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 June 06, 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.”