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:  September 25, 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.

 

Summary of Issues

 

The following is a summary of issues:

 

(1)   Likelihood of Confusion – Refusal to Register under Section (d) – Four (4) Cites/One (1) Registrant – Partial Refusal as to Certain Goods

(2)   Identification of Goods

(3)   Multi-class Advisory and Requirements – 1(b)

 

Likelihood of Confusion – Refusal to Register under Section 2(d) – Multiple Cites – Partial Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4582963, 4693049, 5114768 and 5119670.  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 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. 

 

Similarities of the Marks

 

The applicant’s mark is BEYOND.  The registrant’s marks are BEYOND (two registrations) and BEYOND BY AERUS (all registered by Aerus Concepts, L.P., with general partner Aerus LLC).

 

As the Applicant’s mark, BEYOND, vs. two of the registered marks, BEYOND (both registrations), the marks are identical.

 

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 BEYOND and registrant’s two (2) marks are BEYOND.  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. 

 

As to BEYOND vs. BEYOND BY AERUS, with the Registrant being a company named Aerus, the first and a dominant term in both parties’ marks is the same, namely, BEYOND.

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d).  See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii).  It is likely that goods and/or services sold under these marks would be attributed to the same source.  See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007).  Essentially, deleting a “house mark” or Company name from a mark would be the same, but in reverse.  Accordingly, in the present case, the marks are confusingly similar.

 

Relatedness of the Goods and the Channels of Trade

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

The registered goods are “Vacuums; vacuum cleaner parts and accessories therefor” and “Carpet cleaning machines” (two registrations for each identification).

 

This is a partial refusal as to the following goods in the Applicant’s identification of goods: “Vaccum cleaners and power sweepers and accessories therefore, namely, bags and filters. Hand-held vacuum cleaners and vacuum dust filters. Stick vacuum cleaners” and “Powered handheld floor scrubbers, steam mops and hand held steamers for use on floors.”

 

As to the “vacuum cleaners” [typo presumed in the Applicant’s identification], the parties’ goods are identical.

 

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).

 

As to vacuum cleaners (of various types and accessories therefor) and floor steamers vs. carpet cleaners, these are related goods in that both are used to clean/upkeep carpets/rugs and consumers also expect a single company to sell both.  For example, see http://www.bissell.com/?utm_source=google&utm_medium=cpc&utm_campaign=Bissell+Evergreen+BD+General+Vacuums%2BUS%2BENG%2BPROSP%2BSPART&utm_term=bissel+carpet+cleaner&PID=google_Bissell+Evergreen+BD+General+Vacuums%2BUS%2BENG%2BPROSP%2BSPART&gclid=EAIaIQobChMIo6_FsOyE7AIVEbbICh0kJwHgEAAYASAAEgKK2PD_BwE&gclsrc=aw.ds (attached) where Bissell is selling both vacuum cleaners and also carpet cleaners.

 

For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

 

The parties’ goods are identical and closely related.

 

The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, the mark is refused registration on the Principal Register under Section 2(d).

 

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 of Goods – Clarification Needed

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Specifically,

 

(1)   See bolding below, where clarification is required.

(2)   Phrases in and Identification of Goods must be separated by semi-colons (:) not periods (.).  This is Office formatting. 

(3)   The “routers” must be “power tools” (in Class 7).

(4)   The typo of “vaccum” must be correctly spelled e.g. “vacuum”.

(5)   The “woodworking” goods must be identified by their common commercial name(s).

(6)   “Sandpaper” is Class 3 goods.  “Kits comprised of sandpaper sheets configured to fit power-operated sanders” are Class 7 goods.

(7)   The wording “lawn tractors” is indefinite.  Tractors are Class 12 goods.  While “Tractor towed agricultural implements, namely, mowers” are Class 7 goods.

(8)   The phrase “Manual and power sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, foggers and chemical applicators for lawn and garden” is indefinite as “hand pumped sprayers for …” are Class 8 goods.  While “Power-operated sprayers for …” are Class 7 goods.

 

Applicant may adopt one (1) or more of the following identifications, if accurate: 

 

            Sandpaper, in Class 3;

 

Power drills, namely, drills, drill/drivers, hammer drivers, impact drivers and hammer drills, and accessories therefor, namely, chucks, keyless chucks, chuck keys, wire wheels, drill bits, screwdriver bits, drive socket adaptors and bit tips; Power screwdrivers and screwdriver bits; Power saws, namely, circular saws, trim saws, jig saws, reciprocating saws, hand saws, chain saws, pruning saws, pole saws and accessories therefor, namely, replacement blades; Power tools, namely, Routers and router bits; Vacuum cleaners and power sweepers and accessories therefore, namely, bags and filters; Hand-held vacuum cleaners and vacuum dust filters; Stick vacuum cleaners; Air compressors, and parts therefor, namely, air hoses and inflation kits comprised of compressed air blow guns with nozzles and extensions therefor; Power oscillating multi-tools for sanding and grinding and accessories therefore, namely, attachments for sanding and grinding; Power rotary multi-tools, namely, grinders, sanders and woodworking machines, namely, ________ [further specify the “woodworking machines” by their common commercial name(s)] and accessories therefore, namely, cut off discs and attachments for grinding, sanding and woodworking; Power planers and planer replacement blades; Power sanders, namely, belt sanders, finishing sanders, sheet sanders and orbital sanders and accessories therefore, namely, kits comprised of sandpaper sheets configured to fit power-operated sanders; Power handheld appliances, namely, coffee grinders, food blenders, can openers, juicers, juice extractors, electric knives, food processors, food choppers, mixers and hand held mixers for household purposes; Lawnmowers, namely, walk behind lawn mowers, stand on riding lawn mowers, self-propelled lawn mowers and tractor towed agricultural implements, namely, mowers; Outdoor power equipment, namely, powered loppers, grass shears, lawn and garden string trimmers and spools and string therefor, leaf blowers, snowblowers/throwers, lawn trimmers and edgers, hedge trimmers, lawn and garden tillers, garden cultivator; Powered handheld floor scrubbers, steam mops and hand held steamers for use on floors; High pressure washers, namely, gas and electric-powered pressure washers for cleaning by the application of water under pressure and accessories therefor, namely, tips, nozzles, wands, hoses, guns, quick connects, wheels/reels, covers, extensions, nozzle-cleaning tools, detergent-holding bottles and foaming apparatus, brushes, and parts and replacement fittings; Power-operated sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, and foggers in the nature of chemical applicators for lawn and garden; Electric glue guns; Power-operated staple guns; Machines, namely, Composters, in Class 7;

 

Manual hand pumped sprayers, namely, handheld sprayers, backpack sprayers, tank sprayers, foggers and chemical applicators for lawn and garden

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

 

ID Manual Available Online

 

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.

 

See attached Id listings re: “woodworking” goods in Class 7, sandpaper and “tractor” goods - for acceptable identifications, level of specificity required and proper classification, as needed.

 

 

Requirements for a Multi-class Application Based on Intent-to-Use (Section 1(b))

 

 

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 Sections 1(b) and/or 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).  The application identifies goods and/or services that are classified in at least three (3) classes; however, applicant submitted a fee(s) sufficient for only one (1) class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

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

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

(571) 272-9275

gina.fink@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 September 25, 2020 for

U.S. Trademark Application Serial No. 90083769

 

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. 

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

(571) 272-9275

gina.fink@uspto.gov

 

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 September 25, 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.”