To: | V&C Distributors (GhostPaperComm@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90180240 - GHOST - N/A |
Sent: | February 01, 2021 05:48:56 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90180240
Mark: GHOST
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Correspondence Address:
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Applicant: V&C Distributors
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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: February 01, 2021
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.
In response to this Office action, the applicant must address the following issues:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, applicant has applied to register the mark GHOST for use in connection with “Cigarette paper; Cigarette papers; Cigarette rolling papers.”
Registration No. 3687286 is for the mark GHOST used in connection with “Cigars.”
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.
Similarity of the Marks
In the present case, applicant’s mark is GHOST and registrant’s mark is GHOST. 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.
Ultimately, when purchasers call for the goods of the applicant and registrant using GHOST and GHOST, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods
In this case, applicant's “Cigarette paper; Cigarette papers; Cigarette rolling papers” are related to registrant’s “cigars”. Specifically, both the application and registration identify goods commonly sold by the same source.
The attached Internet evidence, consisting of the websites of third party smoking goods specialty retailers, establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See attached websites for SMOKER’S OUTLET ONLINE, http://www.smokersoutletonline.com/cigars/cigar-wraps.html; TOBACCO STOCK, http://www.tobaccostock.com/; and CARYTOWN TOBACCO, http://carytowntobacco.com/. 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).
Further, where the marks of the respective parties are 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). Therefore, the above evidence demonstrates the necessary degree of relatedness between the smoking goods that is need to support a finding of likelihood of confusion with identical marks.
When purchasers encounter the smoking goods of the applicant and registrant, they are likely to be confused as to the source of the goods by the relationship between them. Thus, the goods are closely related.
Therefore, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
UNACCEPTABLE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
The identification of goods is wording because the specimen raised the issue of unlawful use. If an applicant’s legal goods are derived from ‘hemp’ as defined in the 2018 Farm Bill, the identification of goods must specify that they contain less than 0.3% THC, limiting the scope of the resulting registration to goods compliant with federal law. Therefore, applicant must indicate that the hemp contains less than 0.3% THC concentrations by dry weight basis.
Applicant may adopt the following identification, if accurate:
Class 34 – “Cigarette paper; Cigarette papers; Cigarette rolling papers; all of the forgoing goods derived solely from hemp with not more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis.”
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE TO THIS OFFICE ACTION
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@uspto.gov
RESPONSE GUIDANCE