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:  August 21, 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, 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Trademark Act Section 2(d) refusal
• Identification of goods requirement

 

LIKELIHOOD OF CONFUSION UNDER TRADEMARK ACT 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. 5377556, 5377557 and 5715928.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If the cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981). 

 

Applicant seeks to register the mark “CRAFT.”  Registration No. 5377556 is for the mark “CRAFT” and circle design.  Registration No. 5377557 is for the mark “CRAFT.”  Registration No. 5715928 is for the mark “CRAFT” and beard design.  Applicant’s mark is similar and identical with regard to appearance, sound, meaning and commercial impression to the marks of cited registrants.  The marks convey the same overall commercial impression.  See:  In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975). 

 

Applicant’s goods are described as “Deodorizers for pets; Foam cleansers for personal use; Hair conditioners; Hair detangler preparations; Non-medicated balms for use on pets, namely, comfort creams and sprays, moisturizing balm, pet hair refreshers, finishing anti-static balms and sprays; Odor removers for pets; Pet fragrances; Pet shampoos; Shampoos for pets; Styling sprays for pets; Non-medicated, non-veterinary grooming preparations in the nature of pet shampoo and conditioner; Non-medicated, non-veterinary grooming preparations in the nature of pet shampoos.”  Registration Nos. 5377556 and 5377557 are for “Shampoos; hair conditioners; non-medicated moisturizing skin cream for cosmetic purposes; lip balm; skin lotion.”  Registration No. 5715928 is for “Non-medicated grooming preparations for men, namely, beard oil, beard balm, light hold pomade, heavy hold pomade, beard wash/shampoo.”  The goods of applicant are identical and closely related to the goods of registrants.  The applicant’s and registrants’ goods are likely to be encountered by the same purchasers in the same channel of trade. 

 

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 and/or 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).  In this case, applicant’s goods are identical and highly similar to the goods in the already registered marks, thus the goods are found in the same trade channels.

 

Because applicant’s mark is identical and highly similar to the already registered marks and the goods are identical and highly similar, there is a likelihood of confusion under Trademark Act Section 2(d).  Based on the above reasons, a likelihood of confusion must be found to exist.

 

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

 

 

 

 

 

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

 

IDENTIFICATION OF GOODS INDEFINITE

 

The identification of goods is indefinite and must be clarified because the terms “Non-medicated balms for use on pets, namely, comfort creams and sprays, moisturizing balm, pet hair refreshers, finishing anti-static balms and sprays” is overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must indicate the specific nature of the use of the balms and sprays, for example, for use on skin.  Applicant may adopt the following identification, if accurate:  

Deodorizers for pets; Foam cleansers for personal use; Hair conditioners; Hair detangler preparations; Non-medicated balms for use on pets, namely, comfort creams and sprays for use on skin, moisturizing skin balm, pet hair refreshers, finishing anti-static hair balms and sprays; Odor removers for pets; Pet fragrances; Pet shampoos; Shampoos for pets; Styling sprays for pets; Non-medicated, non-veterinary grooming preparations in the nature of pet shampoo and conditioner; Non-medicated, non-veterinary grooming preparations in the nature of pet shampoos.  (Class 3)

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

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

 

 

 

/Caroline E. Wood/

Trademark Examining Attorney

caroline.wood@uspto.gov

Law Office 110

(571) 272-9243

 

 

 

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 August 21, 2020 for

U.S. Trademark Application Serial No. 88921707

 

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. 

 

 

/Caroline E. Wood/

Trademark Examining Attorney

caroline.wood@uspto.gov

Law Office 110

(571) 272-9243

 

 

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 August 21, 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.”