To: | Tzumi Electronics LLC (tm-uspto@pearlcohen.com) |
Subject: | U.S. Trademark Application Serial No. 88905509 - WIPE OUT - T-595961-US |
Sent: | June 25, 2020 01:35:19 PM |
Sent As: | ecom120@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88905509
Mark: WIPE OUT
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Correspondence Address: PEARL COHEN ZEDEK LATZER BARATZ LLP
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Applicant: Tzumi Electronics LLC
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Reference/Docket No. T-595961-US
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: June 25, 2020
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:
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.
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. 5644389, 4886687, 2406502, and 2385820. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant’s mark is WIPE OUT for:
Class 3: wipes and sanitizers
The first registrant’s mark is WIPE OUTZ for:
Class 5: disposable towelettes impregnated with medicated moisturizers for preparing skin for tattoo application, maintaining skin during tattoo application, and caring for skin after tattoo application
Class 16: disposable dry paper towelettes for use during tattoo application
The second registrant’s mark is BIOSONIC WIPEOUT for:
Class 5: Disinfectants for sanitary purposes; disinfectant sanitizing wipes; and sanitizing preparations for use in institutional and industrial areas, for use in medical and dental offices, for hospital use and for household use
The third registrant’s first mark is WIPE OUT for:
Class 5: pre-moistened towelettes impregnated with antimicrobial and skin conditioning material for animal use, namely, cleaning an animals teats
The first registrant’s mark is WIPE OUT for:
Class 3: pre-moistened toweletts impregnated with antimicrobial and skin conditioning material for animal use, namely, cleaning an animals teats
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 and registrant’s mark are similar in appearance, sound, and overall commercial impression.
Applicant’s mark shares the same wording of “WIPE” and “OUT” with each registrants’ respective marks. 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).
Thus, the marks are highly similar.
Comparison of the Goods
In this case, applicant provides “wipes and sanitizers” while each registrant provides a form of wipe, towelettes or sanitizing preparation with a specific use. These goods are related because applicant is very generally providing wipes and sanitizers without a specified usage that could include all types describe in each registrant’s marks. Please see that attached evidence from the following third party websites which show that those who provide wipes and sanitizers also provide towelettes all for various usages. (all captured June 25, 2020).
KLEENEX: http://www.kleenex.com/en-us/products
CLOROX: http://www.clorox.com/products/product_category/sanitizing/
Thus, the goods are highly related.
Conclusion
Given that the applied-for mark is highly similar to the registered mark and that the goods of applicant are highly related to the goods in the registration, applicant is rightly refused registration under Section 2(d).
DISCLAIMER REQUIRED
The attached evidence from Merriam-Webster defines “wipe” as “to rub with or as if with something soft for cleaning” Please see attached from http://www.merriam-webster.com/dictionary/wipe all captured on June 24, 2020. This wording is commonly used in connection with similar goods to mean the function of a product. Thus, the wording merely describes applicant’s goods because applicant’s wipes and sanitizers will be used to clean in a rubbing manner.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “WIPE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
AMENDED IDENTIFICATION OF GOODS REQUIRED
Applicant may substitute the following wording, if accurate:
Class 3: Wipes impregnated with a cleaning preparation
Class 5: Antiseptic wipes; Sanitizing wipes; Sanitizing preparations for {specify use, e.g., household, commercial, hospital, etc.} use; Sanitizing wipes; Hand-sanitizing preparations
Class 11: Ozone sanitizers for air and water
Class 16: Cellulose wipes
Class 21: Fabric clean room wipes
Class 28: Scent eliminating wipes for use associated with hunting and outdoor recreation
Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods 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
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least six (6) classes; however, applicant submitted a fee sufficient for only one (1) class. 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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.
ASSISTANCE
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.
Alexandra Liebl
/Alexandra Suarez Liebl/
Examining Attorney
Law Office 120
p) (571) 272-4845
e) Alexandra.Suarez@uspto.gov
RESPONSE GUIDANCE