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:  August 09, 2021

 

This Office action is in response to applicant’s communication filed on June 13, 2021.

 

Please note that the Office has reassigned this application to the undersigned trademark examining attorney.

 

In the first Office action of December 18, 2020, registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 5966527.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

The trademark examining attorney has considered applicant’s response, but finds it unpersuasive.  For the reasons set forth below, the refusal under Trademark Act Section 2(d) is maintained and continued with respect to U.S. Registration No. 5966527.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

1.)     REFUSAL OF REGISTRATION UNDER SECTION 2(d) OF THE TRADEMARK ACT – CONTINUED

 

Applicant has applied for registration of the mark REDCAMP in standard character form for: “Air mattresses, not for medical purposes; Armchairs; Beach chairs; Bins of wood or plastic; Boxes of wood or plastic; Cots; Deck chairs; Dog beds; Folding beds; Lounge chairs; Mattresses; Plastic cases; Seats; Settees; Sleeping mats; Sleeping pads; Straw plaits; Tables; Tent pegs, not of metal; Water tanks of plastic for household, industrial, and agricultural purposes; Wood cases”.

 

The registered mark is REDCAMP in standard character form for: “Blankets for outdoor use; Bunting of textile or plastic; Cotton cloth; Fabric valances; Fabrics for textile use; Felt cloth; Flannel; Flax fabrics; Oilcloth; Polyester fabric; Sleeping bag liners; Sleeping bags; Sleeping bags for camping; Travelling blankets; Window curtains; Woolen cloth; Woolen fabric; Comforters; Eiderdowns; Felts; Towels”.

 

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).  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. 

 

In its response, applicant makes only two arguments:  that the fields of the respective parties’ goods “do not have much connection”; and that the marks are owned by the “same person who owns the company”.

 

The trademark examining attorney has carefully considered these arguments, but for the reasons below, finds them unpersuasive. 

 

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). 

 

Although applicant has not contested the similarity of the marks, it is nonetheless important to note that these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

Therefore, the marks are confusingly similar. 

 

Moreover, it is well settled that 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 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).

 

As stated in the prior Office action, 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] 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).

 

The internet evidence from the prior Office action showed that entities who provide mattresses, dog beds, air mattresses, sleeping pads and/or cots similar to the goods of the present applicant, oftentimes also provide sleeping bag liners, sleeping bags, and/or travelling blankets similar to the goods of the present registrant.  See evidence attached to prior Office action. 

 

Furthermore, this evidence also shows that the parties’ goods have complementary uses, i.e., may be used together, and where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease); In re Hester Indus., Inc., 231 USPQ 881, 882-83 (TTAB 1986) (holding bread and frozen chicken parts to be related because they are complementary goods that are appropriate for use together in sandwiches and may otherwise be sold to the same purchasers for use in a single meal); In re Vienna Sausage Mfg. Co., 230 USPQ 799, 799-800 (TTAB 1986) (holding sausage and cheese to be related because they are complementary goods that may be used together in recipes, sandwiches, and hors d’oeuvres); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (holding bath sponges and personal products, such as bath oil, soap, and body lotion, to be related because they are complementary goods that are likely to be purchased and used together by the same purchasers). 

 

Therefore, the goods of the parties are related and would travel the same trade channels and be encountered by the same class(es) of purchasers.

 

Accordingly, for the reasons stated above, based on the identical nature of the marks and the complementary use of the goods of the parties, there is a likelihood of confusion between applicant’s mark and the mark in U.S. Registration No. 5966527.  Thus, the refusal under Section 2(d) of the Trademark Act is properly continued.

 

 

2.)     UNITY OF CONTROL – EVIDENCE REQUIRED

 

Applicant indicates that it has a legal relationship with the registrant in the cited registration.  Per the response, applicant states:  “the two trademarks are actually owned by the same person who owns the company”.  However, a legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.”  That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods in connection with which the trademarks are used, and a “unity of control” over the use of the trademarks.  See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.

 

Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity.  See TMEP §1201.07(b)(i)-(ii).  Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another.  See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii).  It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership.  TMEP §1201.07(b)(ii). 

 

However, in most other situations, additional evidence is required to show unity of control.  For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source.  See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii). 

 

Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties.  In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods in connection with which the trademarks are used, and the parties’ “unity of control” over the use of the trademarks.  See TMEP §1201.07(b)(i)-(iii).  This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1).  However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified.  TMEP §1201.07(b)(i).

 

 

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

 

 

/Martha Santomartino/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

(571) 272-9416

martha.santomartino@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 August 09, 2021 for

U.S. Trademark Application Serial No. 90117437

 

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. 

 

 

/Martha Santomartino/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

(571) 272-9416

martha.santomartino@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 August 09, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”