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:  December 14, 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:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Applications

 

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. 4725721, 5422478, 5042113, 6217760 and 6217759.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant has applied for the mark BEAR, in design form, for use in connection with the following relevant goods and services:

           

Class 8:  hand tools, hand-operated; blade sharpening instruments; hand tools, namely, shovels; garden tools, hand-operated; harpoons; razors, electric or non-electric; Razors, electric; hand tools, namely, punches; vegetable knives; Scissors for children; scissors; hand tools, namely, graving tools; tweezers; swords; handles for hand-operated hand tools; knives; hand tools, namely, vegetable peelers; scaling knives; knives, namely, choppers; hand tools, namely, hammers; vegetable slicers; vegetable shredders; Garlic choppers, non-electric; Garlic cutters, non-electric; tableware, namely, knives, forks and spoons; table knives, forks and spoons for babies; kitchen mandolines; hand tools, namely, meat choppers; fruit segmenters

 

Class 10:  esthetic massage; apparatus surgical apparatus and instruments; electric massage apparatus for household use; vibromassage apparatus; electric facial beauty apparatus; beauty apparatus; massage chairs with built-in massage apparatus; Eye massage apparatus; massage apparatus

 

Class 11:  lamps; electric lamps; water filtering apparatus; sterilization cupboards; water dispensers; water sterilisers; filters for drinking water; torches; lamp casings

 

Class 21:  bottles; fruit cups; containers for household or kitchen use; jugs; enamel, plastic wares, namely, basins, bowls, dishes, kettles and cups; Basins in the nature of bowls; spatulas for household or kitchen purposes; draining racks for tablewares; dish drying racks; tableware, other than knives, forks and spoons; kitchen utensils, namely, garlic presses; Cup lids; coasters, not of paper or textile; glassware, namely, cups, dishes, kettles and tanks; receptacles, namely, glasses; tea cups; drinking cups; drinking bottles for traveling; drinking straws

 

Registrant in U.S. Registration No. 4725721 owns a registration for the mark BEAR., in stylized form, for use in connection with the following relevant goods:

 

Class 8:  Hand tools, namely, pliers, screwdrivers, bottle openers, non-electric can openers, scissors, wire cutters, files, knives, saw blades, nail pullers, wire strippers; multi-function hand tools composed of a variety of knife blades, pliers, screwdrivers, bottle openers, non-electric can openers, scissors, wire cutters, files, hand saw blades, nail pullers, and wire strippers; hunting, fishing and camping knives; sheaths for knives; saws; shovels; spades; axes; hatchets; machetes; hand tools for use in climbing, namely, ice axes, ice hammers

 

Class 11:  Head-mounted and hand-held lighting products, namely, flashlights and electric lanterns, battery-operated lanterns; water purification units

 

Class 21:  Canteens; drinking flasks; drinking vessels; personal fluid hydration reservoirs

 

NOTE – refusal under Section 2(d) based on this registration applies only to the following applied-for goods:

 

Class 8:  hand tools, hand-operated; blade sharpening instruments; hand tools, namely, shovels; garden tools, hand-operated; harpoons; razors, electric or non-electric; Razors,electric; hand tools, namely, punches; vegetable knives; Scissors for children; scissors; hand tools, namely, graving tools; tweezers; swords; handles for hand-operated hand tools; knives; hand tools, namely, vegetable peelers; scaling knives; knives, namely, choppers; hand tools, namely, hammers

 

Class 11:  lamps; electric lamps; water filtering apparatus; sterilization cupboards; water dispensers; water sterilisers; filters for drinking water; torches; lamp casings

 

Class 21:  bottles; fruit cups; containers for household or kitchen use; jugs; enamel, plastic wares, namely, basins, bowls, dishes, kettles and cups; Basins in the nature of bowls; spatulas for household or kitchen purposes; draining racks for tablewares; dish drying racks; tableware, other than knives, forks and spoons; kitchen utensils, namely, garlic presses; Cup lids; coasters, not of paper or textile; glassware, namely, cups, dishes, kettles and tanks; receptacles, namely, glasses; tea cups; drinking cups; drinking bottles for traveling; drinking straws

 

Registrant in U.S. Registration No. 5422478 owns a registration for the mark KUMA, in standard character form, for use in connection with the following goods:

 

Class 8:  Kitchen knives; Japanese chopping kitchen knives; knife sharpeners; fruit knives; vegetable knives; carving knives; thin-bladed kitchen knives; chef knives; hand tools, namely, knife sharpeners

 

NOTE – refusal under Section 2(d) based on this registration applies only to the following applied-for goods:

 

Class 8:  hand tools, hand-operated; blade sharpening instruments; vegetable knives; vegetable slicers; vegetable shredders; Garlic choppers, non-electric; Garlic cutters, non-electric; Scissors for children; scissors; tableware, namely, knives, forks and spoons; table knives, forks and spoons for babies; knives; hand tools, namely, vegetable peelers; scaling knives; knives, namely, choppers; kitchen mandolines; hand tools, namely, meat choppers; fruit segmenters

 

Registrant in U.S. Registration No. 5042113 owns a registration for the mark BEAR, in standard character form, for use in connection with the following relevant goods:

 

Class 10:  Surgical implants of natural, non-living materials comprising polymers for anterior cruciate ligament repair.

 

NOTE – refusal under Section 2(d) based on this registration applies only to the following applied-for goods:

 

Class 10:  apparatus surgical apparatus and instruments

 

Registrant in U.S. Registration No. 6217760 and 6217759 owns a registration for the mark BEAR and BEAR MINI, in standard character form, for use in connection with the following relevant goods:

 

Class 10:  Skin firming apparatuses for cosmetic use, namely, microcurrent facial stimulation apparatuses

 

NOTE – refusal under Section 2(d) based on this registration applies only to the following applied-for goods:

 

Class 10:  esthetic massage; electric massage apparatus for household use; vibromassage apparatus; electric facial beauty apparatus; beauty apparatus; massage chairs with built-in massage apparatus; Eye massage apparatus; massage apparatus

 

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 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 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. 

 

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 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 this case, the applied-for mark BEAR is confusingly similar to the registered marks for BEAR., and BEAR because they are identical in sound, appearance, and connotation “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 nearly 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 services.  Id.

 

With respect to the mark BEAR MINI, this mark is essentially identical to the applied-for mark BEAR because they share the same first word “BEAR” and the additional word “MINI” in the registered mark is disclaimed.  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 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).

 

With respect to the mark KUMA, this word is the foreign equivalent of “BEAR”.  Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark is in Japanese, which is a common, modern language in the United States.  See In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (Japanese); In re Westbrae Natural Foods, Inc., 211 USPQ 642 (TTAB 1981) (Japanese).  The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.  In this case, the ordinary American purchaser would likely stop and translate the mark because Japanese language is a common, modern language spoken by an appreciable number of consumers in the United States.  Therefore, these marks convey the same overall commercial impression.

 

Accordingly, applicant’s and registrant’s marks are similar in sound, appearance, connotation, and commercial impression.  As such, the marks are confusingly similar for likelihood of confusion purposes.

 

Relatedness of the Goods

 

The goods and 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 compared goods and services 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 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).

 

U.S. Reg. No. 4725721

 

Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application use(s) broad wording to describe “hand tools, hand-operated”, “knives”, “lamps”, “electric lamps”, “hand tools, namely, hammers”, “bottles”, and “drinking cups”, which presumably encompasses all goods and services of the type described, including registrant’s more narrow “Hand tools, namely, pliers, screwdrivers, bottle openers, non-electric can openers, scissors, wire cutters, files, knives, saw blades, nail pullers, wire strippers; multi-function hand tools composed of a variety of knife blades, pliers, screwdrivers, bottle openers, non-electric can openers, scissors, wire cutters, files, hand saw blades, nail pullers, and wire strippers; hunting, fishing and camping knives; sheaths for knives; saws; shovels; spades; axes; hatchets; machetes; hand tools for use in climbing, namely, ice axes, ice hammers” in Class 8, “Head-mounted and hand-held lighting products, namely, flashlights and electric lanterns, battery-operated lanterns” in Class 11, and “Canteens; drinking flasks; drinking vessels” in Class 21.  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, these goodsare 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)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

In addition, the attached Internet evidence, consisting of screenshots of webpages from entities offering the applied-for household kitchen and water filtration goods such as cups, kitchen utensils, and straws, and the registered water purification and household goods such as drinking vessels, bottle openers, and can openers, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark.  See http://www.oxo.com/, http://www.zulaykitchen.com/collections/all-products and http://www.kitchenaid.com/. 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).

 

U.S. Reg. No. 5422478

 

In this case, the application uses broad wording to describe “knives” in Class 8, which presumably encompasses all goods and services of the type described, including registrant’s more narrow “Kitchen knives; Japanese chopping kitchen knives; knife sharpeners; fruit knives; vegetable knives; carving knives; thin-bladed kitchen knives; chef knives; hand tools, namely, knife sharpeners”.  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 goods 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)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

In addition, the attached Internet evidence, consisting of screenshots of webpages from entities offering the applied-for household kitchen goods such as kitchen utensils and the registered knives, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark.  See http://www.kohls.com/catalog/farberware-cutlery-knives-kitchen-dining.jsp?CN=Brand:Farberware+Category:Cutlery%20%26%20Knives+Department:Kitchen%20%26%20Dining and http://www.cutco.com/. 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).

 

U.S. Reg. No. 5042113

 

In this case, the application uses broad wording to describe “apparatus surgical apparatus and instruments” in Class 10, which presumably encompasses all goods and services of the type described, including registrant(s)’s more narrow “Surgical implants of natural, non-living materials comprising polymers for anterior cruciate ligament repair”.  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 goods 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)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

U.S. Reg. Nos. 6217760 and 6217759

 

In this case, the application uses broad wording to describe “esthetic massage; electric massage apparatus for household use; vibromassage apparatus; electric facial beauty apparatus; beauty apparatus; massage chairs with built-in massage apparatus; Eye massage apparatus; massage apparatus” in Class 10, which presumably encompasses all goods and services of the type described, including registrant’s more narrow “Skin firming apparatuses for cosmetic use, namely, microcurrent facial stimulation apparatuses” because the registered goods are a type of massage apparatus specifically design for the face.  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 goods 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)).

 

Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

Conclusion

 

The similarity between applicant and registrant’s marks and goods and services is likely to cause consumers to be confused, mistaken, or deceived as to the source of the goods and services.  Accordingly, applicant’s mark must be refused registration under Section 2(d) of the Trademark Act.

 

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

 

If applicant responds to the refusals, applicant must also respond to the requirement set forth below.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 79265251, 90034823, 88766582, and 88640842 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

CLARIFICATION OF IDENTIFICATION OF GOODS REQUIRED

 

As discussed below, the following wording in the identification of goods for International Classes 7, 8, 10, 11, 21 and 35 must be clarified because it is indefinite and too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Class 7

 

The wording “seed germinating apparatus”, “bean sprout machines”, “oil mills”, “slaughtering machines”, “ironing machines”, “mills for household purposes, other than hand-operated”, “beaters, electric”, “kitchen machines, electric”, “machines and apparatus for cleaning” in Class 7 are indefinite and too broad because it does not specify the common commercial name of the goods and could include goods in other classes.  For example, “ironing machines” could include “ironing tables that generate steam for ironing” in Class 11, “electric irons” in Class 8, and “electric clothing pressing machines” in Class 7.

 

In addition, the wording “kneading machines, “peeling machines”, “disintegrators”, and “machines, namely, drug grinders” in Class 7 need clarification because they are indefinite and do not specify the purpose or use of these goods.  Moreover, the wording “noodle cutting machines”, steamed bun making machines”, bean vermicelli making machines”, machines, namely, meat mincers”, “machines, namely, meat choppers”, “fruit peelers”, “food slicers for commercial use”, “bean grinders” “food processors”, and “meat cutters for household purposes” is indefinite because it does not specify whether the goods are electric or power operated. 

 

Finally, the wording “vegetable slicers for household purposes”, “stir fryers used in food industry”, “oxygen and nitrogen generators”, and “soybean milk making machines for household purposes” are classified in Class 7.  However, the proper classification for these goods is Class 8 for the vegetable slicers, and 11 for the remaining goods.  Therefore, applicant may respond by (1) deleting these goods from the application, or (2) adding these goods to Classes 8 and 11.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Class 8

 

The wording “hand tools, hand-operated”, “blade sharpening instruments”, “garden tools, hand-operated”, “harpoons”, “hand implements for hair curling”, “vegetable shredders”, “knives”, “knives, namely, choppers”, “hand pumps”, and “fruit segmenters” in Class 8 are indefinite and/or too broad because it does not specify the common commercial name of the goods or the nature of the goods and could include goods in other classes.  For example, “knives” could include “pocket knives” in Class 8 and “electric knives” in Class 7.

 

In addition, the wording “pore cleanser, electronic or non-electronic”, is classified in Class 8.  However, the proper classification for these goods is Class 21.  Therefore, applicant may respond by (1) deleting these goods from the application, or (2) adding “pore cleanser, namely, electric face cleansing brushes” to Class21.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Class 10

 

The wording “esthetic massage”, “ophthalmic instruments”, “electric facial beauty apparatus”, “beauty apparatus”, “dental apparatus and instruments”, “dental apparatus, electric”, “medicine feeders”, “triangular bandages”, “masks”, and “pacifier chains” in Class 10 are indefinite and/or too broad because it does not specify the nature of the goods.  Applicant should clarify this wording by including the common commercial name of the goods and/or the purpose of the goods.

 

Class 11

 

The wording “cooking utensils, electric”, “roasting apparatus”, “cookers”, “Electric water boilers”, “induction cookers”, barbecue ovens”, “fermentation equipment, electric”, “air dryers”, “air deodorising apparatus”, “gas purifiers”, “steam boilers, other than parts of machines”, “hot air bath fittings”, “machines for cold and hot wet towels”, sterilization cupboards”, “water dispensers”, “pocket warmers”, “heating apparatus, namely, stoves”, “electric torches for lighting”, “ovens, namely, kitchen ranges”, induction cookers for household purposes” and “water flushing installations” are indefinite and too broad because it does not specify the common commercial name of the goods or the nature of the goods and could include goods in other classes.  For example, “electric cooking ovens for household purposes” are in Class 11 and “cooking utensils, namely, grills” are in Class 21. 

 

In addition, the wording “heating lunch boxes, electric” needs clarification because it is indefinite and too broad and does not make clear what these goods are.  “Lunch boxes are classified in Class 11.  However, it is unclear what applicant is intended to provide in this instance.  Therefore, because the nature of the goods and services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording at this time.  See TMEP §1402.01(e).  Moreover, the wording “expresso” and “drier” appear to contain typographical errors and should be “espresso” and “dryer”. 

 

Finally, the wording “bath beds, namely, special bath equipments for newborn” are classified in Class 11.  However, the proper classification for these goods is Class 21.  Therefore, applicant may respond by (1) deleting these goods from the application, or (2) adding these goods to Class21, as suggested below.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Class 21

 

The wording “beaters, non-electric”, “mills for household purposes”, “bottles”, “fruit cups”, “blenders, non-electric, for household purposes”, “enamel, plastic wares, namely, basins bowls, dishes, kettles and cups”, “tongs for feeding bottles”, “tableware, other than knives, forks and spoons”, “glassware, namely, cups, dishes, kettles and tanks”, “receptacles, namely, glasses”, “baby baths, portable”, “brushes”, “isothermic bags”, and “mosquito repellers” in Class 21 are indefinite and/or too broad because it does not specify the nature of the goods.  Applicant should clarify this wording by including the common commercial name of the goods and/or the purpose of the goods.

 

Class 35

 

The wording “publicity” in Class 35 needs clarification because it is indefinite and does not make clear the nature of these services, such as “publicity agency services” or “consulting services relating to publicity”.

 

Applicant may substitute the following wording, if accurate: 

 

Class 7:  spraying machines; Agricultural seed planting machine in the nature of seed germinating apparatus; machines, namely, shredders for industrial use; agricultural machines, namely, bean sprout harvester machines; kneading machines for industrial purposes; electric dumpling making machines; electric noodle pressing machines; electric noodle cutting machines; oil milling machines; electric steamed bun making machines; electric bean vermicelli making machines; power operated machines, namely, meat mincers; power operated machines, namely, meat choppers; sausage making machines; food peeling machines for commercial use; electric fruit peeler fruit peelers; Fruit washing machines; electric food slicers for commercial use; electric bean grinders; electric food processors; stir fryers used in food industry; slaughtering machines, namely, cutting machines; juice extractors, electric; Electric juicers; ironing machines, namely, Electric clothing pressing machines for commercial dry cleaning and laundry purposes including shirt press, collar and cuff press, utility press, legger press, drapery press, pants topper, mushroom topper and puff iron; sewing machines; electrical apparatus for sealing plastics for purpose of packaging; sealing machines for industrial purposes; mixing machines; dishwashers; salt and pepper mills for household purposes, other than hand-operated; tin openers, electric; egg beaters, electric; coffee grinders, other than hand-operated; food blenders, electric, for household purposes; whisks, electric, for household purposes; fruit presses, electric, for household purposes; food processors, electric; vegetable slicers for household purposes; cutting machines, namely, electric meat cutters for household purposes; soybean milk making machines, for household purposes; Dishwashers for household purposes; kitchen grinders, electric; kitchen machines, namely, electric mixers; crushers for kitchen use, electric; laundry washing machines; disintegrators for chemical processing; machines, namely, drug grindingers machines for pharmaceutical use; industrial robots; knives, electric; oxygen and nitrogen generators; machines and apparatus for carpet shampooing, electric; garbage disposal units; Vacuum cleaners for household purposes; Cordless vacuum cleaners; machines and apparatus for cleaning, namely, electric multi-purpose steam cleaners; cleaning appliances utilizing steam; Steam mops, electric; steam mops, electric, for household purposes; curtain drawing devices, electrically operated; shoe polishers, electric

 

Class 8:  hand tools, hand-operated, namely, hammers; blade sharpening instruments, namely, manually-operated razor blade sharpeners; hand tools, namely, shovels; garden tools, hand-operated, namely, trowels, weeding forks, spades, and hoes; harpoons for commercial fishing; beard clippers; razors, electric or non-electric; hair clippers for personal use, electric and non-electric; depilation appliances, electric and non-electric; eyelash curlers; hand implements for hair curling, namely, curling irons; fingernail polishers, electric or non-electric; nail clippers, electric or non-electric; manicure sets, electric; Hair clippers, electric; electrical hair straightening irons; nasal hair trimmers, electric; ear hair trimmers, electric; Razors, electric; hair braiders, electric; pore cleanser, electronic or non-electric; hand tools, namely, punches; flat irons; electric irons; vegetable knives; vegetable slicers; hand-operated vegetable shredders; Scissors for children; scissors; Garlic choppers, non-electric; Garlic cutters, non-electric; hand tools, namely, graving tools; tweezers; swords; tableware, namely, knives, forks and spoons; table knives, forks and spoons for babies; handles for hand-operated hand tools; household knives; hand tools, namely, vegetable peelers; scaling knives; knives, namely, hand-operated choppers; hand-operated pumps; kitchen mandolines; hand tools, namely, meat choppers; fruit segmenters, hand operated; hand tools, namely, hammers; egg slicers, non-electric; air pumps, hand-operated; non-electric food slicers; hand-operated food processor; electric irons; vegetable slicers for household purposes

 

Class 10:   esthetic massage apparatus; apparatus surgical apparatus and instruments; thermometers for medical purposes; nasal aspirators; Otolaryngology instruments; Ophthalmic instruments, namely, ophthalmic cameras for medical purposes; electric massage apparatus for household use; vibromassage apparatus; electric facial beauty massage apparatus; beauty massage apparatus; massage chairs with built-in massage apparatus; Eye massage apparatus; massage apparatus; incubators for babies; incubators for medical purposes; dental apparatus and instruments, namley, intra-oral light systems; dental apparatus, electric, namely, apex locator; surgical apparatus and instruments for dental use; teeth whitening apparatus, namely, teeth aligners; teeth protectors for dental purposes; medicine feeders, namely, pill splitters for dispensing unit doses of medicine; triangular elastic bandages; ear picks; surgical masks; teething rings; babies' bottles; breast pumps; pacifiers for babies; feeding bottle valves; feeding bottle teats; baby feeding pacifiers; teethers; pacifier chains being pacifier clips; orthopaedic belts 

 

Class 11:  lamps; electric lamps; food steamers, electric; cooking utensils, electric, namely, electric cooking ovens for household purposes; bread baking machines; kettles, electric; coffee machines, electric; bread-making machines; roasting apparatus, namely, roasting spits for cooking ovens; deep fryers, electric; autoclaves, electric, for cooking; electric egg boilers; electric egg steamers for household purposes; esxpresso coffee machines, electric; electric warmers for feeding bottles; electric pressure cookers; electric appliances for making yoghurt; electric yogurt makers; multicookers; pressure cookers, electric; heaters, electric, for feeding bottles; electric hot water bottles; Electric water boilers, namely, electric kettles; electric slow cookers; electric food warmers; heating lunch boxes, electric; electric baking pans; electromagnetic induction cookers; electric frying pans; electric outdoor grills; barbecue cooking ovens; food dehydrators, electric; fermentation equipments, electric, namely, percolating fermenters and dry fermenters; ice-cream making machines; freezers; refrigerators; extractor hoods for kitchens; electric fans for personal use; electric laundry dryers; air purifying apparatus and machines; electric air driers; air filtering installations; electric air deodorising apparatus; air-conditioning apparatus; Air humidifying apparatus; fabric steamers; electric hair dryiers; clothes dryers; gas purifiers, namely, gas purification machines; gas purifying apparatus; humidifiers for household purposes; electric food dehydrators for household purposes; water heaters; steam boilers, other than parts of machines, namely, steam generators; heat accumulators; hot air bath fittings, namely, plumbing fittings in the nature of valves; bathroom heating lamp; steam facial apparatus, namely, saunas; fumigation apparatus, not for medical purposes; sauna bath installations; hydromassage bath apparatus; machines for cold and hot wet towels, namely, electric towel warmers; portable electric foot baths; bath tubs; bath tubs for sitz baths; toilet bowls; Toilet bowls for children; bath beds, namely, special bath equipments for newborn; lids for toilet seats; electric hot air hand driers; contactless hand driyers; electric hand driyers used in washrooms; hand drying apparatus for washrooms; water filtering apparatus; sterilization cupboards, namely, sterilization units for medical purposes; water dispensers, namely, tap water faucets; water sterilisers; filters for drinking water; sterilisers; socks, electrically heated; Electrically heated vests; Electrically heated gloves; radiators, electric; pocket warmers, electric, for warming hands; heating apparatus, namely, gas stoves; electrically heated clothing; germicidal lamps for purifying air; ultraviolet ray lamps, not for medical purposes; electric torches for lighting; lamp casings; cooking ovens, namely, kitchen ranges; gas stoves; electric stoves; electromagnetic induction cookers for household purposes; water flushing installations, namely, flush handles for toilets; air fryers; stir fryers used in food industry, namely, electric woks; soybean milk making machines, for household purposes; oxygen and nitrogen generators

 

Class 21:  egg beaters, non-electric; kitchen grinders, non-electric; salt and pepper mills for household purposes, hand-operated; bottles, sold empty; fruit cups for fruit; containers for household or kitchen use; lunch boxes; food blenders, non-electric, for household purposes; jugs; enamel, plastic wares, namely, sugar basins, bowls, dishes, non-electric kettles and cups; Basins in the nature of bowls; spatulas for household or kitchen purposes; draining racks for tablewares; dish drying racks; kitchen tongs for feeding bottles; tableware, other than knives, forks and spoons, namely, dishes and cups; kitchen utensils, namely, garlic presses; Cup lids; coasters, not of paper or textile; glassware, namely, cups, dishes, non-electric kettles and tanks; basins in the nature of glass receptacles, namely, glasses; tea cups; drinking cups; drinking bottles for traveling; drinking straws; buckets; washtubs; baby baths, portable, namely, inflatable bath tubs for babies; diaper pails; piggy banks; combs; electric combs; large-toothed combs for the hair; cosmetic brushes; scrubbing brushes; dishwashing brushes; toothbrushes; toothbrushes, electric; manual toothbrushes; heads for electric toothbrushes; toothbrush cases; powder puffs; thermally insulated containers for food; isothermic bags, namely, thermally insulated containers for food; bath sponges; mops; plug-in diffusers for mosquito repellents; mosquito repellers, namely, plug in diffusers for mosquito repellents; hand-operated dumpling making machines; hand-operated steamed bun making machines; pore cleanser, namely, electric face cleansing brushes; bath beds, namely, special bath equipment for newborns in the nature of inflatable bath tubs;

 

Class 35:  bill-posting; advertising; publicity agency services; television advertising; online advertising on a computer network; presentation of goods on communication media, for retail purposes; pay per click advertising; advisory services for business management; marketing research; import-export agency services; marketing; telemarketing services; provision of an online marketplace for buyers and sellers of goods and services

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services 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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

 

 

/Elizabeth A. O'Brien/

Examining Attorney

Law Office 105

(571) 272-0046

Elizabeth.OBrien@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 December 14, 2020 for

U.S. Trademark Application Serial No. 90109305

 

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. 

 

 

/Elizabeth A. O'Brien/

Examining Attorney

Law Office 105

(571) 272-0046

Elizabeth.OBrien@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 December 14, 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.”