United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88588786
Mark: QUEEN ANNE
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Correspondence Address: |
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Applicant: Carnival plc
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Reference/Docket No. CUNA-0291-T
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: November 25, 2019
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.
Summary of Issues
• Section 2(d) Refusals – Likelihood of Confusion
• Identification and Classification of Services
• Section 44(d) Sole Basis
Section 2(d) Refusals – Likelihood of Confusion
THESE REFUSALS APPLY ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0039438, 1199758, 1260053, 2906927 and 2605744. 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 so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.
U.S. Registration No. 0039438
Similarity of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, applicant’s mark is QUEEN ANNE and registrant’s mark is QUEEN ANNE.
These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of Goods and Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The applicant’s services are “retail services … alcoholic beverages (except beers).”
The registrant’s goods are “scotch whisky.”
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
In this case, the attached Internet evidence, consisting of the third party websites of scotch whisky producers, namely, McCallan and Duncansby, establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark and are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, the goods and services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Upon encountering identical marks and closely related goods and services, consumers would mistakenly believe that applicant’s services and registrant’s goods emanate from a common source, and thus a likelihood of confusion as to source would result. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
U.S. Registration No. 1199758
Similarity of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, applicant’s mark is QUEEN ANNE and registrant’s mark is QUEEN ANNE.
These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Relatedness of Goods and Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The applicant’s services are “retail services … confectionery.”
The registrant’s goods are “candy.”
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
In this case, the attached Internet evidence, consisting of the third party websites of candy producers, namely, See’s Candies and Hitschies, establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark and are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Moreover, the application uses broad wording to describe the subject matter goods “chocolates, confectionery,” which presumably encompasses all goods of the type described, including registrant’s more narrow list relevant narrower goods “candy.” 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).
Accordingly, the goods and services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Upon encountering identical marks and closely related goods and services, consumers would mistakenly believe that applicant’s services and registrant’s goods emanate from a common source, and thus a likelihood of confusion as to source would result. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
U.S. Registration No. 1260053 and 2906927
Similarity of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, applicant’s mark is QUEEN ANNE and registrant’s marks are QUEEN ANNE’S LACE.
The marks create an overall similar commercial impression because they share the highly similar terms QUEEN ANNE and QUEEN ANNE’S. The ending of the registered mark includes an apostrophe and letter “s.” This additional matter has little, if any, trademark significance and does not otherwise affect the overall similarity of the marks in terms of commercial impression. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark . . . has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).
Moreover, the registered marks disclaims the highly descriptive word LACE. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the term LACE is less significant in terms of affecting the mark’s commercial impression, and renders the wording QUEEN ANNE’S the more dominant element of the registered marks.
Therefore, the marks are confusingly similar because the applicant’s mark QUEEN ANNE creates an overall similar commercial impression with the registered mark QUEEN ANNE’S LACE.
Relatedness of Goods and Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The applicant’s services are “retail services … various clothing and textiles and textile goods, bed and table covers, table naplins, dish cloths.”
The registrant’s goods are “household linens, namely comforters, comforter covers, duvet covers, shams, bed skirts, sheets, pillow cases, blankets, towels, place mats made of fabric, tablecloths made of fabric, cloth napkins, drapes and valences, window curtains, and decorative fabrics, namely, cotton, cotton/polyester, silk and silk/velvet” and “lingerie.”
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
In this case, the attached Internet evidence, consisting of the third party websites of clothing and home goods producers, namely, Eddie Bauer and Calvin Klein, establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark and are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Moreover, the application uses broad wording to describe the subject matter goods “textiles and textile goods,” which presumably encompasses all goods of the type described, including registrant’s more narrow list relevant narrower goods various household goods. 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).
Accordingly, the goods and services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Upon encountering legally identical marks and closely related goods and services, consumers would mistakenly believe that applicant’s services and registrant’s goods emanate from a common source, and thus a likelihood of confusion as to source would result. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
U.S. Registration No. 2605744
Similarity of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, applicant’s mark is QUEEN ANNE and registrant’s marks are QUEEN ANNE’S REVENGE STEAK & SEAFOOD.
The marks create an overall similar commercial impression because they share the highly similar terms QUEEN ANNE and QUEEN ANNE’S. The ending of the registered mark includes an apostrophe and letter “s.” This additional matter has little, if any, trademark significance and does not otherwise affect the overall similarity of the marks in terms of commercial impression. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark . . . has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).
Moreover, the registered mark disclaims the highly descriptive word STEAK & SEAFOOD. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the term STEAK & SEAFOOD is less significant in terms of affecting the mark’s commercial impression, and renders the wording QUEEN ANNE’S the more dominant element of the registered marks.
Therefore, the marks are confusingly similar because the applicant’s mark QUEEN ANNE creates an overall similar commercial impression with the registered mark QUEEN ANNE’S REVENGE STEAK & SEAFOOD.
Relatedness of Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The applicant’s services are “banqueting services; bar services; bistro services; brasserie services; cafe services; catering services for the provision of food and drink; club services for the provision of food and drink; cocktail lounge services; coffee shop services; cookery advice; delicatessens; fast food restaurant services; food preparation services; food takeaway service; ice cream parlour services; cocktail lounge services; personal chef services; provision of food and drink; provision of food and drink in restaurants; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink; restaurant information services; restaurant reservation services; restaurant services; self-service cafeteria services; self-service restaurants; services for providing food and drink; snack bar services; tea room services; wine bars; restaurant and bar services.”
The registrant’s services are “restaurant and bar services.”
In this case, the services in the application and registration are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Moreover, the registration uses broad wording to describe “restaurant and bar services,” which presumably encompasses all services of the type described, including applicant’s other food and beverage services. 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 registrant’s services 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)).
Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Upon encountering highly similar marks and identical services, consumers would mistakenly believe that applicant’s services and registrant’s services emanate from a common source, and thus a likelihood of confusion as to source would result. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Identification and Classification of Services
The identification of services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.
The wording “not included in other classes” or “in Class 16” in the identification of services should be deleted as superfluous wording and is not necessary. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “travel, excursion and tour arrangement services” in the identification of services is indefinite and must be clarified because making bookings for transportation is in Class 39 or arranging recreational or entertainment activities is in Class 41. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “sports entertainment services” in the identification of services is indefinite and must be clarified to specify the sports, e.g., “conducting basketball games.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “entertainment services; providing recreation services; providing sports and entertainment services” “education services; education and entertainment” in the identification of services is indefinite and must be clarified because the wording does not make clear the nature of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See suggestions below.
The wording “live musical performances; live cabaret performances; live comedy performances; live variety performances” in the identification of services is indefinite and must be clarified to add “presenting.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “provision of classes, demonstrations and workshops” in the identification of services is indefinite and must be clarified to specify subject matter, e.g., “art and crafts.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “gaming services” in the identification of services is indefinite and must be clarified because to specify, e.g., “casino gaming.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “banqueting services” “cookery advice” “food takeaway service” “room hire services” “room reservation services” “services for providing food and drink” “temporary accommodation” “provision of accommodation on board cruise ships” in the identification of services is indefinite and must be clarified because the wording does not make clear the nature of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See suggestions below.
The wording “health spa services” in the identification of services is indefinite and must be clarified to further specify the functions, e.g., “for health and wellness of the body and spirit.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 35: Retail store services in bleaching preparations and other substances for laundry use, cleaning polishing,
scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, soaps and the like, cosmetics and toiletries, perfumery and incenses, cosmetics sold in kit
form, creams, bath salts, beauty masks, deodorants, laundry preparations, powder compacts, lipsticks, makeup, nail polish, oils for cosmetic purposes and oils for perfumes and scents, shampoos,
shaving preparations, shoe polish, sun tanning preparations, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, ship ornaments of metal, metal sculptures, metal key chains,
metal key rings, metal thimbles, brass magnets, bells of metal, hand operated tools and implements, cutlery, side arms, razors, sugar tongs, can openers, tin
openers, bottle openers, nutcrackers, spoons, non-electric cheese slicers, non-electric pizza cutters, forks, spoons and trivets, thimbles, key rings
of metal, key chains of metal, fridge magnets of metal, apparatus for recording, transmission or reproduction of sound or images,
magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire
extinguishing apparatus, protective clothing, clothing, headgear and footwear, eye shades, sunglasses, spectacles, torches, binoculars, buoys, DVD players, CD players, magnetic data recorders, video
cassettes, video game cartridges, computer games, video recorders, compact disks, electronic publications, ships and boats, their parts and fittings, jewellery, precious stones, horological and
chronometric instruments, watches, ornamental thimbles of precious metal, pill boxes of precious metal, compacts of precious metal, key rings of precious metal, coins, medallions, lapel pins, printed
matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists materials, paint brushes, typewriters and office requisites except
furniture, instructional and teaching material except apparatus, plastic materials for packaging (not included in other classes), printers type,
printing blocks, magazines, brochures, flyers, playing cards, post cards, greeting cards, drawing materials, painting materials, paper flags, ink, beer mats in class 16,
paper coasters and place mats in class 16, tissues, table cloths in in class 16, wrapping paper, maps, pens, pencils and other writing
instruments, liquid pens, executive pens, book marks, diaries and calendars, catalogues, office requisites, notebooks, notepads, globes in in class 16, napkins in in class 16, handkerchiefs of paper, desk accessories, posters, writing paper, prints, printing materials in class 16, paper bags, paperweights,
pictures, scrapbooks, photo albums, pencil cases, paper table stationery, coloring books, coffee table books, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and
saddlery, luggage, leather traveling cases, shopping bags, tote bags, beach bags, purses, wallets, coin purses, change purses, toiletry bags sold empty, fanny packs, sport bags, gym bags, sports
bags, organizer bags, compartmentalized travel organizer bags for organizing clothes and accessories, children’s purses, backpacks, rucksacks, duffel bags, travel bags, key fobs of leather,
furniture, mirrors, picture frames, plaster sculptures and plastic sculptures, mirror compacts, fridge magnets (non metallic), fridge magnets of resin, nonmetal and nonleather key chains, non-metallic key rings, chairs, household or kitchen utensils and containers, glassware, porcelain and earthenware, combs and sponges, ornamental thimbles of porcelain
or glass, brushes except paintbrushes, containers for food and for beverages, tableware, tea towels, oven gloves, ceramic plates, coasters, clothes brushes, shoe brushes,
shoe horns, shoe shine cloths, handy shoe shiners and shoe trees, portable cold boxes, drinking flasks, insulating flasks and vacuum bottles, ice pails, plates, pepper pots, sugar bowls, salt
shakers, egg cups, napkin holders, napkin rings, trays, toothpick holders, pill boxes, pan-mats and trivets, feeding vessels for pets, sports and water bottles sold empty, travel mugs, mugs, drinking
glasses and tankards, glass tankards, glass shot glasses, crystal shot glasses, textiles and textile goods, bed and table covers, table cloths, table napkins, dish cloths, banners and flags not of paper, towels and other fabric apparel accessories, labels of cloth, cloth shopping bags, clothing, footwear, headgear, shirts, blouses, t-shirts, tank tops, sweatshirts,
sweatpants, bandannas, scarves, headbands, sweat bands, bathing suits, shorts, skirts, dresses, jackets, coats, pants, pajamas, robes, undergarments, night shirts, nightgowns, hats, caps, gloves,
mittens, socks, hosiery and shoes games and playthings, gymnastic and sporting articles, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers,
decorations for Christmas trees, scale model ships, Christmas tree ornaments, golf club head covers, golf bags, sports bags for tennis, puzzles, poker chips, toy musical instruments, toy dolls, toy
boats, model ships, inflatable dolls and ring buoys for recreational use, inflatable toy cruise ships, plush toys, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and
preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces as condiments, spices, ice, chocolate
based beverages, chocolates, confectionery, fudge, cookies, biscuits, cakes, ice creams, pasta, pate, yogurt, conserves, sauces, alcoholic beverages except beers, wine, beer,
soft drinks, fruit juices, cigarette lighters, cigarette cases, smokers articles, matches and ashtrays
Class 39: Cruise ship services; transportation of passengers by ship; travel, excursion and tour arrangement services, namely, [specify, e.g., arranging transport for travelers and travel tours]; arranging and booking of cruises
Class 40: Cookery advice in the nature of cooking oil recycling services
Class 41: Sports entertainment services, namely, [specify, e.g., conducting basketball games]; providing sports facilities; organizing of sports competitions and sports events; entertainment services, namely, [specify, e.g., organizing, arranging and hosting social entertainment events]; providing recreation services in the nature of [specify, e.g., pools]; providing sports and entertainment services, namely, [specify, e.g., sports instruction services, conducting of sports competitions]; providing facilities for recreational activities; presenting live musical performances; presenting live cabaret performances; presenting live comedy performances; presenting live variety performances; education services, namely, [indicate field or subject matter, e.g., art exhibitions]; education and entertainment in the nature of [specify, e.g., on-line competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields]; provision of classes, demonstrations and workshops in the field of [specify, e.g., arts and crafts]; provision of casino, gambling and gaming facilities; casino and casino gaming services; travel, excursion and tour arrangement services, namely, arranging and conducting guided tours of cruise ships, conducting guided tours of [specify facility or area, e.g., a museum, an historical site, a winery, whale watching], and conducting guided tours by [specify, e.g., bicycle, canoe, mopeds]; night club services
Class 43: Banqueting services, namely, providing banquet and social function facilities for special occasions; bar
services; bistro services; brasserie services; cafe services; catering services for the provision of food and drink; club services for the provision of food and drink; cocktail lounge services;
coffee shop services; cookery advice concerning cooking recipes; delicatessens; fast food restaurant services; food preparation services; food takeaway service,
namely, take-out restaurant services; ice cream parlour services; cocktail lounge services [delete duplicate wording]; night club
services; personal chef services; provision of conference facilities; provision of exhibition facilities; provision of facilities for conventions; provision of food and drink; provision of
food and drink in restaurants; provision of information relating to bars; provision of information relating to restaurants; provision of information relating to the preparation of food and drink;
temporary accommodation reservations; restaurant information services; restaurant reservation services; restaurant services; room hire services, namely, [specify, e.g., rental of
rooms for social functions]; room rental for exhibitions; cruise ship room reservation services; self-service cafeteria services; self-service restaurants; provision services for providing food and drink; snack bar services; tea room services; providing temporary accommodation;
provision of temporary accommodation on board cruise ships; wine bars; restaurant and bar services
Class 44: Beauty and health care; hair care; hairdressing; massage and health spa services for health and wellness of the body and spirit; cosmetic body care services
See TMEP §§1402.01, 1402.03.
Additions to Identification Not Permitted
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Section 1(b) Requirements for Combined Applications
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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 5 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Class Fees
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Section 44(d) Sole Basis
The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided. See 15 U.S.C. §1126(d), (e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
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.
/William T. Verhosek/
William T. Verhosek
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 114
571-272-9464
william.ve
RESPONSE GUIDANCE
