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:  July 13, 2021

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on June 21, 2020 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Trademark Act Sections 1, 2, 3 & 45 Refusal. See TMEP §§706, 711.02.

 

In a previous Office action dated June 21, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d), Trademark Act Sections 1, 2 & 45 Refusal for the mark failing to function as a trademark and Trademark Act Section 2(e)(1) for the mark being merely descriptive. Moreover, applicant was notified of a prior filed application.

 

The following refusal and notification have been withdrawn:  Trademark Act Sections 1, 2 & 45 Refusal and Prior Filed Application Notice. See TMEP §713.02.

 

The following refusals are continued and maintained: Trademark Act Section 2(d) and Trademark Act Section 2(e)(1) for the mark being merely descriptive. See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion
• New Issue: Sections 1, 2, 3 & 45 Refusal – Failure to Function as a Trademark
• Section 2(e)(1) Refusal – Merely Descriptive
• Supplemental Register Advisory
• Trademark Attorney Advisory

 

Applicant must respond to all issues raised in this Office action and the previous June 21, 2020 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4338892 and 5410423. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registrations attached to the Office Action dated June 21, 2020 at p. 2-5.

 

The applicant has applied to register the mark PEARL in standard character format for “Food coloring” in class 002.

 

The mark in Registration No. 4338892 is SUPER PEARL in standard character format for “Food colors for domestic use” in class 002.

 

The mark in Registration No. 5410423 is EMPRESS PEARL in standard character format for “Edible powdered dust for decoration of confectioneries” in class 030.

 

Please note, all the marks are in standard character format.

 

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 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

In this case, applicant’s mark PEARL is confusingly similar to the marks SUPER PEARL in Registration No. 4338892 and EMPRESS PEARL in Registration No. 5410423. Specifically, PEARL in applicant’s mark is highly similar in sound and appearance to the PEARL in registrants’ marks in Registration Nos. 4338892 and 5410423. Further, this shared word means “a nearly neutral slightly bluish medium gray”. See the evidence attached to the Office Action dated June 21, 2020 at p. 6.

 

Moreover, the applicant’s mark PEARL is wholly encompassed within the registrants’ marks SUPER PEARL in Registration No. 4338892 and EMPRESS PEARL in Registration No. 5410423, thus, purchasers are likely to believe that registrants’ marks merely identify additional lines of food color and edible powdered dust goods. Specifically, purchasers are likely to believe that the marks SUPER PEARL in Registration No. 4338892 and EMPRESS PEARL in Registration No. 5410423, identify new lines of food color and edible powdered dust goods offered under the PEARL line of food coloring goods. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Furthermore, although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

Applicant’s Argument

 

Applicant primarily argues applicant’s mark differs in appearance and overall commercial impression from the registrants’ marks, because applicant’s mark is spelt differently, looks different and has less words than the registered marks, which gives applicant’s mark an overall separate and distinct commercial impression apart from the registered marks. See the Response to Office Action dated March 4, 2021 at p. 2-4. However this is unpersuasive, because applicant’s mark shares the identical word PEARL with registrants’ marks. In particular, the applicant’s mark PEARL is wholly encompassed within the registrants’ marks SUPER PEARL in Registration No. 4338892 and EMPRESS PEARL in Registration No. 5410423, thus, purchasers are likely to believe that registrants’ marks merely identify additional lines of food color and edible powdered dust goods offered under the PEARL line of food coloring goods. Moreover, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks. Therefore, the marks are identical in part and are confusingly similar.

 

In summary, because of the contemporaneous use of the word PEARL, it follows that purchasers are likely to believe that the marks identify the same source for food coloring goods. Thus, the marks are confusingly similar.

 

Comparison of the Goods

 

The compared goods 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] 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).

 

The applicant’s goods are “Food coloring” in class 002.

 

The registrant’s goods in Registration No. 4338892 are “Food colors for domestic use” in class 002.

 

The registrant’s goods in Registration No. 5410423 are “Edible powdered dust for decoration of confectioneries” in class 030.

 

As the case law and attached evidence shows, the applicant's food coloring goods, registrant’s food color goods in Registration No. 4338892 and registrant’s edible powdered dust goods for decoration of confectioneries in Registration No. 5410423 are commercially related, because applicant’s broad identification encompasses registrants’ narrower identifications in Registration Nos. 4338892 and 5410423.

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registrations at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “Food coloring”, which presumably encompasses all goods of the type described, including registrants’ more narrow identifications of: “Food colors for domestic use” in Registration No. 4338892 and “Edible powdered dust for decoration of confectioneries” in Registration No. 5410423. 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 registrants’ 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)). In particular, “food coloring” means “a digestible substance used to give color to food”, which includes anything that can give color to food including registrant’s food color goods in Registration No. 4338892 and registrant’s edible powdered dust goods in Registration No. 5410423. See the evidence attached to the Office Action dated June 21, 2020 at p. 7.

 

Additionally, the goods 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 registrants’ goods are related.

 

Applicant’s Arguments

 

Applicant primarily argues applicant’s goods are not related to registrants’ goods, because applicant’s goods are food coloring, registrants’ goods are food colors for domestic use in connection with SUPER PEARL and edible powdered dust for decoration of confectionaries in connection with EMPRESS PEARL, applicant’s goods travel in separate and distinct trade channels from registrants’ goods and applicant’s goods are marketed to different consumers than registrants’ goods. See the Response to Office Action dated March 4, 2021 at p. 5-8. However this is unpersuasive, because determining likelihood of confusion is based on the description of the goods stated in the application and registrations at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  In this case, the application uses broad wording to describe “Food coloring”, which presumably encompasses all goods of the type described, including registrants’ more narrow identifications of: “Food colors for domestic use” in Registration No. 4338892 and “Edible powdered dust for decoration of confectioneries” in Registration No. 5410423. 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 registrants’ 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)). In particular, “food coloring” means “a digestible substance used to give color to food”, which includes anything that can give color to food including registrant’s food color goods in Registration No. 4338892 and registrant’s edible powdered dust goods in Registration No. 5410423. See the evidence attached to the Office Action dated June 21, 2020 at p. 7. Additionally, the goods 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 registrants’ goods are related.

 

Applicant primarily argues applicant’s consumers are sophisticated in so far as they exercise care when making a purchasing decision for such goods. See the Response to Office Action dated March 4, 2021 at p. 8-9. However this is unpersuasive, because the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

Applicant primarily argues there is no evidence in the record indicating that there has been actual confusion in the marketplace between Applicant’s trademark and the cited marks. See the Response to Office Action dated March 4, 2021 at p. 9-10. However this is unpersuasive, because “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).

 

Accordingly, purchasers are likely to be confused as to the source of the goods when they encounter food coloring offered under highly similar marks. Therefore, applicant's goods and registrants’ goods are considered related for likelihood of confusion purposes.

 

In summary, the marks are confusingly similar and the goods are related.  Therefore, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SECTIONS 1, 2, 3 & 45 REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK

 

Registration is refused because the applied-for mark is a term that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a term that is commonly used by those in applicant’s particular trade or industry to merely convey information about applicant’s or similar goods.  See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for retail clothing store services a common promotional phrase and incapable of registration); TMEP §1202.04(a). 

 

Slogans and terms that are merely informational in nature, such as statements or laudatory phrases about goods ordinarily used in business or in a particular trade or industry, are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term functions as a trademark depends on how it would be perceived by the relevant public.  In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04.  “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The attached evidence shows that PEARL is commonly used by those in applicant’s particular trade or industry to indicate the particular color of food coloring goods. See the evidence attached to the Office Action dated June 21, 2020 at p. 6 & 8-10. Because consumers are accustomed to seeing this term used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating the particular color of the food coloring goods. Thus, this term would not be perceived as a mark that distinguishes applicant’s goods from those of others and identifies the source of applicant’s goods.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d). 

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes a characteristic of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

In this case, the mark is descriptive of applicant’s goods and does not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the applicant has applied to register the mark PEARL for “Food coloring” in class 002. PEARL means “a nearly neutral slightly bluish medium gray”. See the evidence attached to the Office Action dated June 21, 2020 at p. 6. Therefore, PEARL merely describes applicant provides food coloring goods in a nearly neutral slightly bluish medium gray color, which is a characteristic of applicant’s goods.

 

Moreover, many companies that provide similar food coloring goods as applicant use the word PEARL to describe the color of their goods, as denoted by the following examples of use in the attached screenshots:

 

• See the evidence attached to the Office Action dated June 21, 2020 at p. 8.
• See the evidence attached to the Office Action dated June 21, 2020 at p. 9.
• See the evidence attached to the Office Action dated June 21, 2020 at p. 10.

 

Thus, the wording in the applicant’s mark is merely descriptive of a characteristic of applicant’s goods.

 

Therefore, the wording PEARL immediately conveys to purchasers that applicant provides food coloring goods in a nearly neutral slightly bluish medium gray color. Thus, the mark is merely descriptive of a characteristic of applicant’s goods, and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Please note, applicant did not provide any evidence or arguments in support of registration concerning this refusal.

 

SUPPLEMENTAL REGISTER ADVISORY

 

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to this refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against this refusal. TMEP §816.04.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)   Use of the registration symbol ® with the registered mark in connection with the designated goods, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)   Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)   Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)   Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)   Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

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

 

TRADEMARK ATTORNEY ADVISORY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this 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. 

 

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusals in this Office action.  See TMEP §§705.02, 709.06.

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

 

 

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 July 13, 2021 for

U.S. Trademark Application Serial No. 88848331

 

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. 

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

 

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 July 13, 2021, 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.”