Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  July 15, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 05, 2020.

 

In a previous Office action dated October 21, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement:  amend the identification of goods. Furthermore, applicant was advised of a potential likelihood of confusion with the mark in prior filed application serial no. 88656703. In the December 05, 2020, Response applicant requested suspension of the application pending final disposition of the earlier-filed referenced application and thus the examining attorney issued a suspension letter on December 15, 2020. On February 4, 2021, prior filed application serial no. 88656703 abandoned and thus no longer poses a bar to registration.

 

As such, based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• IDENTIFICATION OF GOODS

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The trademark examining attorney has reviewed applicant’s arguments in support of registration. However, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4337843.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4337843.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously sent registration attached to the October 21, 2020, Office action.

 

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 and/or services 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)).

 

The applied-for mark is BINK in International Class 021 for: “Mugs; Beverage glassware; Containers for household or kitchen use; Household utensils, namely, kitchen tongs; Household utensils, namely, kitchen utensils; Reusable plastic water bottles sold empty; Reusable metal water bottles sold empty.”

 

The registered mark is BINK in International Class 020 for: “furniture.”

 

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 and/or services.  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 Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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)-(b)(v). 

 

In the present case, applicant’s mark is BINK in standard character format and registrant’s mark is also BINK in standard character format.  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.  Id.

 

The fact that the applied-for mark contains a design does not obviate the similarity between the two marks because, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Applicant has not provided any arguments or evidence regarding the identical nature of the marks.

 

Therefore, the examining attorney maintains that the marks are confusingly similar. 

 

Comparison of Goods

 

The goods 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 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).

 

Applicant’s goods are in International Class 021 for: “ Mugs; Beverage glassware; Containers for household or kitchen use; Household utensils, namely, kitchen tongs; Household utensils, namely, kitchen utensils; Reusable plastic water bottles sold empty; Reusable metal water bottles sold empty.”

 

Registrant’s goods are in International Class 020 for: “furniture.”

 

The attached Internet evidence, consisting of webpage screenshots from Ikea and Pier 1 Imports, as well as the previously attached evidence from Crate & Barrel, Pottery Barn, and West Elm, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark.  See attached evidence from Ikea and Pier 1 Imports, as well as the previously attached evidence from Crate & Barrel, Pottery Barn, and West Elm, demonstrating that entities frequently provide a variety of applicant’s goods, such as mugs, drinkware, food storage containers, and kitchen utensils, as well as registrant’s furniture, and market the goods under the same mark. Thus, applicant’s and registrant’s goods 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).

 

Applicant has not provided any arguments or evidence regarding the relatedness of the parties’ goods.

 

Therefore, the examining attorney maintains that the goods of the parties are related.

 

In sum, the applied-for and registered marks are identical and the goods of the parties are considered related. As such, the registration refusal under Section 2(d) for likelihood of confusion purposes is made final.

 

Applicant should note the following requirement being made final at this time.

 

IDENTIFICATION OF GOODS

 

The October 21, 2020, Office action set forth several amendments to the identification of goods in Class 021 in order to clarify their nature. Applicant’s December 5, 2020, Response did not address the identification amendments and, as such, this requirement is being made final at this time, as set forth in greater detail below.

 

The wording “HOUSEHOLD UTENSILS, NAMELY, KITCHEN UTENSILS” in the identification of goods is indefinite and must be clarified to identify the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition, the wording “REUSABLE METAL WATER BOTTLES SOLD EMPTY” in the identification of goods is indefinite and must be clarified to identify the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In sum, applicant may substitute the following wording, if accurate:

 

• International Class 021: Mugs; Beverage glassware; Containers for household or kitchen use; Household utensils, namely, kitchen tongs; Household utensils, namely, kitchen utensils in the nature of {specify e.g., splatter screens, pouring and straining spouts, serving scoops}; Reusable plastic water bottles sold empty; Reusable metal water bottles sold empty, namely, stainless steel water bottles

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.  See TMEP §1402.04.

RESPONSE GUIDELINES

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

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 refusal and requirement 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.

 

/Lucy Ellen Browne/

Lucy Ellen Browne

Examining Attorney

Law Office 125

571-270-0961

lucy.browne@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 15, 2021 for

U.S. Trademark Application Serial No. 90040438

 

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. 

 

 

Browne, Lucy

 

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 15, 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.”