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. 90056370
Mark: COMPADRE
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Correspondence Address:
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Applicant: Leguizamon, Sebastian
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Reference/Docket No. N/A
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 06, 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(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3551200. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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)).
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.
Applicant seeks to register the mark “COMPADRE” in stylized characters for “Absorbent paper for tobacco pipes; Ashtrays; Ashtrays for smokers; Ashtrays for smokers made of non-precious metals; Ashtrays for smokers made of precious metals; Ashtrays of precious metal; Ashtrays, not of precious metal; Asian long tobacco pipe sheaths; Asian long tobacco pipes (kiseru); Boxes for electronic cigarettes and electronic cigarette accessories; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; Cases for electronic cigarettes and electronic cigarette accessories; Cigar and cigarette boxes; Cigar and cigarette boxes of precious metal; Cigar boxes; Cigar boxes not of precious metal; Cigar boxes of precious metal; Cigar cases of precious metal; Cigar cases, not of precious metal; Cigar clippers; Cigar cutters; Cigar holders of precious metal; Cigar humidifiers; Cigar lighters; Cigar pouches; Cigar wraps; Cigarette ash receptacles; Cigarette boxes; Cigarette cases; Cigarette cases made of precious metal; Cigarette cases not of precious metal; Cigarette cutters; Cigarette filters; Cigarette holders; Cigarette holders not of precious metal; Cigarette holders of precious metal; Cigarette lighter holder; Cigarette lighter holder not of precious metal; Cigarette lighter holders; Cigarette lighters; Cigarette lighters not for land vehicles; Cigarette lighters not of precious metal; Cigarette lighters of precious metal; Cigarette lights not of precious metal; Cigarette paper; Cigarette papers; Cigarette rolling machines; Cigarette rolling papers; Cigarette tobacco; Cigarette tubes; Cigarette-rolling machines; Cigarettes; Cigarettes and cigars; Cigarillos; Cigars; Clips for attaching cigarette lighters onto objects; Computerized cigarette lighters; Devices for heating tobacco for the purpose of inhalation; Devices for heating tobacco substitutes for the purpose of inhalation; Electric cigarettes; Electric cigars; Electronic cigarette atomizers sold empty; Electronic cigarette boxes; Electronic cigarette cases; Electronic cigarette holders; Electronic cigarette lanyards; Electronic cigarette lighters; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes and oral vaporizers for smokers; Electronic cigarettes for use as an alternative to traditional cigarettes; Electronic cigars; Electronic hookahs; Electronic shisha pipes; Electronic smoking pipes; Filter tips; Filter tips for cigarettes; Filter-tipped cigarettes; Filtered cigars and cigarettes; Firestones; Flavorings for tobacco, other than essential oils; Flints and firestones; Flints for lighters; Hand-held machines for injecting tobacco into cigarette tubes; Herbal molasses; Herbs for smoking; Holders for cigar and cigarette of precious metal; Holders for cigars and cigarettes; Hookahs; Lighter flints; Lighters for smokers; Lighters for smokers; Liquefied gas cylinders for cigarette lighters; Machines allowing smokers to make cigarettes by themselves; Match boxes; Match boxes of precious metal; Match holders; Match holders of precious metal; Matchboxes; Matches; Mechanical electronic cigarettes; Mentholated pipes; Molasses tobacco; Non-electric cigar lighters not of precious metal; Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Paraffin matches; Pipe cleaners for tobacco pipes; Pipe pouches; Pipe racks for tobacco pipes; Pipe tampers; Pipe tobacco; Pocket apparatus for rolling cigarettes; Pocket apparatus for self-rolling cigarettes; Pocket appliances for rolling one's own cigarettes; Pocket devices for self-rolling of cigarettes; Pocket machines for rolling cigarettes; Pocket-size cigarette rolling machines; Rolling tobacco; Safety matches; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe; Smokeless tobacco; Smoker's articles, namely, filter tubes; Smoker's articles, namely, metal pocket-sized receptacles with lids for cigarette butts; Smokers' articles in the nature of hemp wicks for lighting; Smokers' articles, namely, cigar relighting liquid solution; Smokers' articles, namely, containment clips used to keep a cigar from falling apart; Smokers' articles, namely, keystones for pipes; Smokers' articles, namely, outdoor cigar and cigarette disposal units; Smokers' articles, namely, outdoor receptacles for cigar and cigarette ash and waste; Smokers' clips for securing hand rolled cigarettes; Smokers' oral vaporizer refill cartridges sold empty; Smokers' rolling trays; Smoking pipe cleaners; Smoking pipe racks; Smoking pipes; Snuff boxes made of precious metal; Snuff boxes, not of precious metal; Snuff dispensers; Sulfur matches; Tobacco and tobacco substitutes; Tobacco filters; Tobacco grinders; Tobacco pipe cleaners; Tobacco pipes; Tobacco pipes; Tobacco pouches; Tobacco spittoons; Tobacco substitute; Tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco tins; Tobacco water pipes; Tobacco, cigars and cigarettes; Wicks for cigarette lighters; Yellow phosphorus matches” in International Class 034.
Registrant’s mark is “COMPADRE” in standard characters for “cigar holder; cigar holder attachable to furniture, vehicles, and portable objects; cigar holder with clamp to facilitate attachment to a supporting object” in International Class 034.
Similarity 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).
Applicant’s mark is “COMPADRE” in stylized characters.
Registrant’s mark is “COMPADRE” in standard characters.
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Therefore, although the applied-for mark is stylized, the registered mark is in standard characters and has protection in all stylizations, and therefore is legally identical to the applied-for mark.
These marks are legally 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 legally 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.
Therefore, the marks are confusingly similar.
As set forth above, Applicant’s mark “COMPADRE” is confusingly similar with registrant’s mark in U.S. Reg. No. 3551200. Next, the goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.
Similarity or Relatedness 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 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).
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registrations at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Here, the goods identified by Applicant are “Absorbent paper for tobacco pipes; Ashtrays; Ashtrays for smokers; Ashtrays for smokers made of non-precious metals; Ashtrays for smokers made of precious metals; Ashtrays of precious metal; Ashtrays, not of precious metal; Asian long tobacco pipe sheaths; Asian long tobacco pipes (kiseru); Boxes for electronic cigarettes and electronic cigarette accessories; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; Cases for electronic cigarettes and electronic cigarette accessories; Cigar and cigarette boxes; Cigar and cigarette boxes of precious metal; Cigar boxes; Cigar boxes not of precious metal; Cigar boxes of precious metal; Cigar cases of precious metal; Cigar cases, not of precious metal; Cigar clippers; Cigar cutters; Cigar holders of precious metal; Cigar humidifiers; Cigar lighters; Cigar pouches; Cigar wraps; Cigarette ash receptacles; Cigarette boxes; Cigarette cases; Cigarette cases made of precious metal; Cigarette cases not of precious metal; Cigarette cutters; Cigarette filters; Cigarette holders; Cigarette holders not of precious metal; Cigarette holders of precious metal; Cigarette lighter holder; Cigarette lighter holder not of precious metal; Cigarette lighter holders; Cigarette lighters; Cigarette lighters not for land vehicles; Cigarette lighters not of precious metal; Cigarette lighters of precious metal; Cigarette lights not of precious metal; Cigarette paper; Cigarette papers; Cigarette rolling machines; Cigarette rolling papers; Cigarette tobacco; Cigarette tubes; Cigarette-rolling machines; Cigarettes; Cigarettes and cigars; Cigarillos; Cigars; Clips for attaching cigarette lighters onto objects; Computerized cigarette lighters; Devices for heating tobacco for the purpose of inhalation; Devices for heating tobacco substitutes for the purpose of inhalation; Electric cigarettes; Electric cigars; Electronic cigarette atomizers sold empty; Electronic cigarette boxes; Electronic cigarette cases; Electronic cigarette holders; Electronic cigarette lanyards; Electronic cigarette lighters; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes and oral vaporizers for smokers; Electronic cigarettes for use as an alternative to traditional cigarettes; Electronic cigars; Electronic hookahs; Electronic shisha pipes; Electronic smoking pipes; Filter tips; Filter tips for cigarettes; Filter-tipped cigarettes; Filtered cigars and cigarettes; Firestones; Flavorings for tobacco, other than essential oils; Flints and firestones; Flints for lighters; Hand-held machines for injecting tobacco into cigarette tubes; Herbal molasses; Herbs for smoking; Holders for cigar and cigarette of precious metal; Holders for cigars and cigarettes; Hookahs; Lighter flints; Lighters for smokers; Lighters for smokers; Liquefied gas cylinders for cigarette lighters; Machines allowing smokers to make cigarettes by themselves; Match boxes; Match boxes of precious metal; Match holders; Match holders of precious metal; Matchboxes; Matches; Mechanical electronic cigarettes; Mentholated pipes; Molasses tobacco; Non-electric cigar lighters not of precious metal; Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Paraffin matches; Pipe cleaners for tobacco pipes; Pipe pouches; Pipe racks for tobacco pipes; Pipe tampers; Pipe tobacco; Pocket apparatus for rolling cigarettes; Pocket apparatus for self-rolling cigarettes; Pocket appliances for rolling one's own cigarettes; Pocket devices for self-rolling of cigarettes; Pocket machines for rolling cigarettes; Pocket-size cigarette rolling machines; Rolling tobacco; Safety matches; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe; Smokeless tobacco; Smoker's articles, namely, filter tubes; Smoker's articles, namely, metal pocket-sized receptacles with lids for cigarette butts; Smokers' articles in the nature of hemp wicks for lighting; Smokers' articles, namely, cigar relighting liquid solution; Smokers' articles, namely, containment clips used to keep a cigar from falling apart; Smokers' articles, namely, keystones for pipes; Smokers' articles, namely, outdoor cigar and cigarette disposal units; Smokers' articles, namely, outdoor receptacles for cigar and cigarette ash and waste; Smokers' clips for securing hand rolled cigarettes; Smokers' oral vaporizer refill cartridges sold empty; Smokers' rolling trays; Smoking pipe cleaners; Smoking pipe racks; Smoking pipes; Snuff boxes made of precious metal; Snuff boxes, not of precious metal; Snuff dispensers; Sulfur matches; Tobacco and tobacco substitutes; Tobacco filters; Tobacco grinders; Tobacco pipe cleaners; Tobacco pipes; Tobacco pipes; Tobacco pouches; Tobacco spittoons; Tobacco substitute; Tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco tins; Tobacco water pipes; Tobacco, cigars and cigarettes; Wicks for cigarette lighters; Yellow phosphorus matches” in International Class 034.
The goods identified by registrant are “cigar holder; cigar holder attachable to furniture, vehicles, and portable objects; cigar holder with clamp to facilitate attachment to a supporting object” in International Class 034.
The attached Internet evidence from BC Specialties, Cigars International, Emerson’s, Neptune, Thompson, Tobacco & Vape King, VA Smoke Shop, and Vape n Cigar establishes that the same entity commonly manufactures, produces, and/or especially provides all kinds of tobacco and tobacco-related products and markets the goods under the same mark.
Most importantly, this evidence shows that at a minimum, all these goods are commonly sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are similar or highly complementary in terms of purpose or function. Specifically, these are all goods that are the tobacco products themselves, tobacco substitute products, lighters or sources of ignition for these products, accessories for smoking, using, or storing these products, and because of the age-restricted nature of these goods, are often in specialty stores that sell all these goods, or are in segregated sections of stores where all these products are displayed or grouped together. 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). Most explicitly, cigar clips, as identified in the registration, are inherently used with cigars, as are identified in the application.
Finally, 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 Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
Accordingly, Applicant’s goods are sufficiently related to the goods identified in U.S. Registration No. 3551200, such that consumers may mistakenly believe they originate from a single source.
Conclusion
Based on the foregoing, registration of the applied-for mark is refused under Trademark Act Section 2(d) due to a likelihood of confusion with U.S. Trademark Registration No. 3551200.
AMENDED IDENTIFICATION OF GOODS REQUIREMENT
Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 034 for “lighters for smokers” and “tobacco pipes.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate (suggestions in BOLD, fields that
need completing in {BOLD ITALICS}, deletions in BOLD STRIKETHROUGH):
CLASS 034: Absorbent paper for tobacco pipes; Ashtrays; Ashtrays for smokers; Ashtrays for smokers made
of non-precious metals; Ashtrays for smokers made of precious metals; Ashtrays of precious metal; Ashtrays, not of precious metal; Asian long tobacco pipe sheaths; Asian long tobacco pipes (kiseru);
Boxes for electronic cigarettes and electronic cigarette accessories; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of
electronic cigarettes; Cases for electronic cigarettes and electronic cigarette accessories; Cigar and cigarette boxes; Cigar and cigarette boxes of precious metal; Cigar boxes; Cigar boxes not of
precious metal; Cigar boxes of precious metal; Cigar cases of precious metal; Cigar cases, not of precious metal; Cigar clippers; Cigar cutters; Cigar holders of precious metal; Cigar humidifiers;
Cigar lighters; Cigar pouches; Cigar wraps; Cigarette ash receptacles; Cigarette boxes; Cigarette cases; Cigarette cases made of precious metal; Cigarette cases not of precious metal; Cigarette
cutters; Cigarette filters; Cigarette holders; Cigarette holders not of precious metal; Cigarette holders of precious metal; Cigarette lighter holder; Cigarette lighter holder not of precious metal;
Cigarette lighter holders; Cigarette lighters; Cigarette lighters not for land vehicles; Cigarette lighters not of precious metal; Cigarette lighters of precious metal; Cigarette lights not of
precious metal; Cigarette paper; Cigarette papers; Cigarette rolling machines; Cigarette rolling papers; Cigarette tobacco; Cigarette tubes; Cigarette-rolling machines; Cigarettes; Cigarettes and
cigars; Cigarillos; Cigars; Clips for attaching cigarette lighters onto objects; Computerized cigarette lighters; Devices for heating tobacco for the purpose of inhalation; Devices for heating
tobacco substitutes for the purpose of inhalation; Electric cigarettes; Electric cigars; Electronic cigarette atomizers sold empty; Electronic cigarette boxes; Electronic cigarette cases; Electronic
cigarette holders; Electronic cigarette lanyards; Electronic cigarette lighters; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes and oral vaporizers
for smokers; Electronic cigarettes for use as an alternative to traditional cigarettes; Electronic cigars; Electronic hookahs; Electronic shisha pipes; Electronic smoking pipes; Filter tips; Filter
tips for cigarettes; Filter-tipped cigarettes; Filtered cigars and cigarettes; Firestones; Flavorings for tobacco, other than essential oils; Flints and firestones; Flints for lighters; Hand-held
machines for injecting tobacco into cigarette tubes; Herbal molasses; Herbs for smoking; Holders for cigar and cigarette of precious metal; Holders for cigars and cigarettes; Hookahs; Lighter flints;
Lighters for smokers; Lighters for smokers; Liquefied gas cylinders for cigarette lighters; Machines allowing smokers to make cigarettes by themselves; Match boxes; Match
boxes of precious metal; Match holders; Match holders of precious metal; Matchboxes; Matches; Mechanical electronic cigarettes; Mentholated pipes; Molasses tobacco; Non-electric cigar lighters not of
precious metal; Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Paraffin matches; Pipe cleaners for tobacco pipes; Pipe pouches; Pipe racks for tobacco pipes; Pipe tampers; Pipe
tobacco; Pocket apparatus for rolling cigarettes; Pocket apparatus for self-rolling cigarettes; Pocket appliances for rolling one's own cigarettes; Pocket devices for self-rolling of cigarettes;
Pocket machines for rolling cigarettes; Pocket-size cigarette rolling machines; Rolling tobacco; Safety matches; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe; Smokeless
tobacco; Smoker's articles, namely, filter tubes; Smoker's articles, namely, metal pocket-sized receptacles with lids for cigarette butts; Smokers' articles in the nature of hemp wicks for lighting;
Smokers' articles, namely, cigar relighting liquid solution; Smokers' articles, namely, containment clips used to keep a cigar from falling apart; Smokers' articles, namely, keystones for pipes;
Smokers' articles, namely, outdoor cigar and cigarette disposal units; Smokers' articles, namely, outdoor receptacles for cigar and cigarette ash and waste; Smokers' clips for securing hand rolled
cigarettes; Smokers' oral vaporizer refill cartridges sold empty; Smokers' rolling trays; Smoking pipe cleaners; Smoking pipe racks; Smoking pipes; Snuff boxes made of precious metal; Snuff boxes,
not of precious metal; Snuff dispensers; Sulfur matches; Tobacco and tobacco substitutes; Tobacco filters; Tobacco grinders; Tobacco pipe cleaners; Tobacco pipes; Tobacco
pipes; Tobacco pouches; Tobacco spittoons; Tobacco substitute; Tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco tins; Tobacco water pipes; Tobacco, cigars and
cigarettes; Wicks for cigarette lighters; Yellow phosphorus matches
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.
Applicant should also note the following advisory.
Advisory: Mark Description Will Not Be Printed
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
Respond online to this letter. Use the TEAS “Response to Office Action” online form to file a response
If Applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
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.
How to respond. Click to file a response to this nonfinal Office action.
Roth, Benjamin
/Benjamin H. Roth/
Examining Attorney
Law Office 122
(571) 272 -5266
benjamin.roth@uspto.gov
RESPONSE GUIDANCE
