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:  November 30, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

PRELIMINARY AMENDMENT

 

On November 16, 2021, applicant filed a preliminary amendment providing a true copy of the foreign registration certificate and amending certain entries in the identification of goods. This preliminary amendment has been accepted.

 

SUMMARY OF ISSUES:

• Prior-Filed Application
• Section 2(d) Refusal – Likelihood of Confusion
• Advisory – Claiming Ownership of Cited Registrations
• Section 44(e) Refusal – Owner Name Differs in U.S. Application and on Foreign Registration
• Information Required to Establish Ownership of Foreign Application
• English Translation Required
• Identification of Goods
• Multiple-Class Application Requirements
• Information About Applicant’s Goods Required

 

PRIOR-FILED APPLICATION

 

The effective filing date of pending U.S. Application Serial No. 90380563 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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 mark in the referenced application.  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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1920552, 1920554, 5009975, 5899721, 4779715, 4745907, 4820929, 5235363, and 6033270.  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 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.  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 and differences in the marks.”); TMEP §1207.01. 

 

Comparison 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Here, applicant’s mark is SAMSUNG in stylized form, and registrants’ marks are SAMSUNG with a design element, SAMSUNG with a design element, SAMSUNG BIOEPIS in standard character form, SAMSUNG in standard character form, SAMSUNG BIOLOGICS in standard character form, ACTIVATED BY SAMSUNG SDI in stylized form, SAMSUNG with a design element, SAMSUNG in standard character form, and SAMSUNG with a design element. In this case, the respective marks all contain the wording SAMSUNG, which creates a similar appearance and commercial impression. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Further, some of the registered marks contain oval design elements. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Nothing about the oval design element changes the meaning or commercial impression of the shared wording SAMSUNG.

 

Here, the respective marks all contain the wording SAMSUNG, which creates a similar appearance and commercial impression. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). In this case, the fact that the applied-for mark and the registered marks all contain the wording SAMSUNG creates a similar appearance and commercial impression that consumers who encounter the marks would be likely to assume a connection between the parties.

 

Considering the above, the marks are sufficiently similar to cause a likelihood of confusion under Trademark Act Section 2(d).

 

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] 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).

 

In this case, applicant’s mark is SAMSUNG in stylized form for:

·         “Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry” in Class 1;

·         “Paints; varnishes; lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists” in Class 2;

·         “Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices” in Class 3;

·         “Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting” in Class 4;

·         “Pharmaceutical preparations for diagnosis purposes; veterinary preparations for diagnosis purposes; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; medical plasters; materials for dressings; material for stopping teeth; dental wax; disinfectants; preparations for destroying vermin; fungicides; herbicides” in Class 5;

·         “Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; apparatus for locomotion by land, air, or water, namely, trains, boats, and airplanes” in Class 12;

·         “Rubber, raw or semi-worked; gutta-percha; gum, raw or semi-worked; asbestos, mica, raw or partly processed; plastic material in extruded form for use in production; packing, stopping and insulating materials; non-metallic flexible pipes” in Class 17;

·         “Leather and imitations of leather, animal skin, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips; harness; saddlery” in Class 18;

·         “Building materials, not of metal; non-metallic rigid pipes for construction purposes; asphalt, pitch and bitumen; non metallic transportable buildings; non-metal monuments” in Class 19;

·         “Furniture made from wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell amber, mother-of pearl, meerschaum and substitutes for all these materials, or from plastics” in Class 20;

·         “Ropes; string; nets; tents; awning; tarpaulins; sails; sacks for the transport and storage of materials in bulk; canvas bags for storage; padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials” in Class 22;

·         “Yarn and thread for textile purposes” in Class 23;

·         “Textiles and textile goods, not included in other classes; namely, textiles used as lining for clothing” in Class 24;

·         “Clothing, namely, shirts, sweaters, dresses, skirts, pants, blouses, vests, tops, and suits” in Class 25; and

·         “Games and playthings, namely, card games, board games, memory games, tabletop games; gymnastic and sporting articles, namely, footballs, handballs, exercise balls” in Class 28.  

 

The cited registered marks are:

·         SAMSUNG with design element for “acrylonitrile butadiene styrene synthetic resins, unprocessed cellulose plastic resins, emulsifiers, epoxy resins, unprocessed esters, expandable polystyrene resins, ferrite powder, flourine, hydrocarbons, hydrogen peroxide, organic acids, organophosphorus compounds, unprocessed polyacetate resins, unprocessed polycarbonate resins, unprocessed polyethylene resins, unprocessed polymethyl methacrylate resins, unprocessed polypropylene resins, unprocessed polystyrene resins, unprocessed styrene acrylonitrile resins, unprocessed synthetic resins, defoaming agents, dispersants, synthetic rubbers, all for use in polymeric and plastic products; adhesives for use in the textile industries; alcohol for use in the manufacture of domestic/household products; alumina powder for use in the manufacture of electronic cores; photographic developing chemicals; sensitized photographic film; unexposed camera, cinematographic, and photographic film; chemical preparations and unprocessed plastics in the nature of filtering materials; chemical vehicles used in the manufacture of paint; photosensitive paper” in Class 1;

·         SAMSUNG with design element for “sheets, blankets and towels, billiard cloths, blinds of textile, canvases for tapestry or embroidery, cotton fabrics, elastic woven materials for domestic use, household use, and for use in the manufacture of clothing, upholstery, and drapery, fabrics for domestic use, household use, and for use in the manufacture of clothing, upholstery, and drapery, fabrics of imitation animal skins, fustians, jersey fabrics, linen cloths, fabrics used in the making of hat lining, moleskins (fabrics), non-woven textile fabrics for domestic use, household use, and for use in the manufacture of clothing, upholstery, and drapery, pillowcases, ramie fabrics, rayon fabrics, sleeping bags (sheeting for use in making sleeping bags), tablecloths (not of paper), table linens (textile), velvets, woolen fabrics, worsted fabrics, wool fabric” in Class 24;

·         SAMSUNG BIOEPIS in standard character form for “Chemical, biological, antibody and protein formulations being pharmaceuticals for the treatment of immunologic disorders, autoimmune diseases, inflammatory diseases, arthritis, cancer, tumor, central nervous system disorders or metabolic diseases; anti-cancer agents; preparations for treatment of immune diseases; preparations for treatment of arthritis; preparation for treatment of ophthalmologic diseases; preparation for treatment of circulatory disorders; preparation for treatment of nervous system disorders; sanitary preparations for medical purposes; food for babies; dietary supplements for humans and animals; material for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides” in Class 5;

·         SAMSUNG in standard character form for, inter alia:

o   “Pharmaceutical products for the treatment of colorectal cancer; biopharmaceuticals for the treatment of cancer; antibodies for medical purposes; pharmaceutical preparations for the treatment of autoimmune diseases; pharmaceutical preparations for the treatment of arthritis; pharmaceutical preparations for the treatment of diseases of the metabolic system; pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations for the treatment of inflammatory diseases; pharmaceuticals, biosimilars and biological preparations for medical purposes for treatment of cancer, immunologic disorders, autoimmune diseases, arthritis, inflammatory diseases, central nervous system disorders, and metabolic diseases; pharmaceutical preparations for the treatment of leukemia; vaccines against pneumococcal infections; pharmaceutical preparations for ocular use; pharmaceutical drug, namely, pharmaceutical preparations for the treatment of anemia; biochemical preparations for medical purpose for the treatment of cancer, immunologic disorders, autoimmune diseases, arthritis, inflammatory diseases, central nervous system disorders, and metabolic diseases; nutraceutical preparations for therapeutic or medical purposes for the treatment of cancer, immunologic disorders, autoimmune diseases, arthritis, inflammatory diseases, central nervous system disorders, and metabolic diseases; nutraceuticals for use as dietary supplements” in Class 5;

o   “Connected vehicles, namely, land vehicles connected to internet; driverless cars being autonomous cars; structural parts and fittings for autonomous vehicles” in Class 12;

·         SAMSUNG BIOLOGICS in standard character form for “Monoclonal antibody for medical purposes; biological preparations for the treatment of cancer; medicines for the treatment of cancer diseases, autoimmune disease, and neurological disorders; reagents and media for medical and veterinary diagnostic purposes; biological tissue cultures for veterinary purposes; pharmaceutical preparations for treatment of inflammatory disorders and immunoregulatory disorders; pharmaceutical preparations for treatment of human immune diseases and conditions; pharmaceuticals for the treatment of viral infections, neoplastic, metabolic, autoimmune or inflammatory disorders” in Class 5;

·         ACTIVATED BY SAMSUNG SDI in stylized form for, inter alia, “Two-wheeled motor vehicles; Electric cars; Electric motors for motor cars; Electric motors for land vehicles” in Class 12;

·         SAMSUNG with design element for “Agglutinants for paints, enamel paints, varnishes, aniline dyes, dyestuffs, namely, annato, anti-rust grease, bactericidal paints, bitumen varnish, carbon black pigment, dye stuffs, namely, cochineal carmine, ceramic paints, coatings for roofing felt in the nature of paint, colorants for use in the manufacture of goods, distemper colors, enamels for painting, fixative, namely, varnishes used in wood or metal work, glazes for paints or lacquers, dye stuffs, namely, indigo, ink for use in the manufacture of leather, lacquers in the nature of a coating, lamp black pigment, printing ink, colorants used to promote drying in painting and in the manufacture of textiles or foods, namely, saffron; thickeners for paints, thinners for lacquers, thinners for paints, titanium dioxide pigments, undercoating for vehicle chassis, varnishes” in Class 2;

·         SAMSUNG in standard character form for:

o   “Handbags, travelling bags, brief cases, travelling trunks, pocket wallets, purses, rucksacks, umbrellas, parasols” in Class 18;

o   “Cotton thread and yarn, linen thread and yarn, rayon thread and yarn, sewing thread and yarn, silk thread and yarn, spun cotton, spun silk, woolen thread and yarn” in Class 23;

o   “Cotton fabrics, elastic woven fabric, flannel, jersey fabric, knitted fabric, linen cloth, moleskin fabric not for medical use, rayon fabric, ramie fabric, silk fabric, upholstery fabrics, velvet, woolen fabric” in Class 24;

o   “Boots, shoes, sandals, slippers, sports shoes, combinations, frocks, socks, stockings, coats, gloves, hats, hosiery, jackets, jumpers; knitwear, namely, shirts, dresses and sweaters; neckties, pants, shirts, skirts, suits, trousers, underclothing” in Class 25; and

·         SAMSUNG with a design element for “Filled toner cartridges for printers and photocopiers; filled ink cartridges for printers and photocopiers; xerographic toners; ink and toners for photocopiers and printers” in Class 2.

 

Determining likelihood of confusion is based on the description of the goods 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 uses broad wording to describe “Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry” in Class 1, “Paints; varnishes; lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists” in Class 2, “Pharmaceutical preparations for diagnosis purposes; veterinary preparations for diagnosis purposes; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; medical plasters; materials for dressings; material for stopping teeth; dental wax; disinfectants; preparations for destroying vermin; fungicides; herbicides” in Class 5, “Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; apparatus for locomotion by land, air, or water, namely, trains, boats, and airplanes” in Class 12, “Leather and imitations of leather, animal skin, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips; harness; saddlery” in Class 18, “Yarn and thread for textile purposes” in Class 23, “Textiles and textile goods, not included in other classes; namely, textiles used as lining for clothing” in Class 24, and “Clothing, namely, shirts, sweaters, dresses, skirts, pants, blouses, vests, tops, and suits” in Class 25, which presumably encompasses all goods of the type described, including registrants’ more narrow “acrylonitrile butadiene styrene synthetic resins, unprocessed cellulose plastic resins, emulsifiers, epoxy resins, unprocessed esters, expandable polystyrene resins, ferrite powder, flourine, hydrocarbons, hydrogen peroxide, organic acids, organophosphorus compounds, unprocessed polyacetate resins, unprocessed polycarbonate resins, unprocessed polyethylene resins, unprocessed polymethyl methacrylate resins, unprocessed polypropylene resins, unprocessed polystyrene resins, unprocessed styrene acrylonitrile resins, unprocessed synthetic resins, defoaming agents, dispersants, synthetic rubbers, all for use in polymeric and plastic products; adhesives for use in the textile industries; alcohol for use in the manufacture of domestic/household products; alumina powder for use in the manufacture of electronic cores; photographic developing chemicals; sensitized photographic film; unexposed camera, cinematographic, and photographic film; chemical preparations and unprocessed plastics in the nature of filtering materials; chemical vehicles used in the manufacture of paint; photosensitive paper” in Class 1, “Agglutinants for paints, enamel paints, varnishes, aniline dyes, dyestuffs, namely, annato, anti-rust grease, bactericidal paints, bitumen varnish, carbon black pigment, dye stuffs, namely, cochineal carmine, ceramic paints, coatings for roofing felt in the nature of paint, colorants for use in the manufacture of goods, distemper colors, enamels for painting, fixative, namely, varnishes used in wood or metal work, glazes for paints or lacquers, dye stuffs, namely, indigo, ink for use in the manufacture of leather, lacquers in the nature of a coating, lamp black pigment, printing ink, colorants used to promote drying in painting and in the manufacture of textiles or foods, namely, saffron; thickeners for paints, thinners for lacquers, thinners for paints, titanium dioxide pigments, undercoating for vehicle chassis, varnishes” in Class 2, “Filled toner cartridges for printers and photocopiers; filled ink cartridges for printers and photocopiers; xerographic toners; ink and toners for photocopiers and printers” in Class 1, “Chemical, biological, antibody and protein formulations being pharmaceuticals for the treatment of immunologic disorders, autoimmune diseases, inflammatory diseases, arthritis, cancer, tumor, central nervous system disorders or metabolic diseases; anti-cancer agents; preparations for treatment of immune diseases; preparations for treatment of arthritis; preparation for treatment of ophthalmologic diseases; preparation for treatment of circulatory disorders; preparation for treatment of nervous system disorders; sanitary preparations for medical purposes; food for babies; dietary supplements for humans and animals; material for stopping teeth, dental wax; preparations for destroying vermin; fungicides, herbicides” in Class 5, “Pharmaceutical products for the treatment of colorectal cancer; biopharmaceuticals for the treatment of cancer; antibodies for medical purposes; pharmaceutical preparations for the treatment of autoimmune diseases; pharmaceutical preparations for the treatment of arthritis; pharmaceutical preparations for the treatment of diseases of the metabolic system; pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations for the treatment of inflammatory diseases; pharmaceuticals, biosimilars and biological preparations for medical purposes for treatment of cancer, immunologic disorders, autoimmune diseases, arthritis, inflammatory diseases, central nervous system disorders, and metabolic diseases; pharmaceutical preparations for the treatment of leukemia; vaccines against pneumococcal infections; pharmaceutical preparations for ocular use; pharmaceutical drug, namely, pharmaceutical preparations for the treatment of anemia; biochemical preparations for medical purpose for the treatment of cancer, immunologic disorders, autoimmune diseases, arthritis, inflammatory diseases, central nervous system disorders, and metabolic diseases; nutraceutical preparations for therapeutic or medical purposes for the treatment of cancer, immunologic disorders, autoimmune diseases, arthritis, inflammatory diseases, central nervous system disorders, and metabolic diseases; nutraceuticals for use as dietary supplements” in Class 5, “Monoclonal antibody for medical purposes; biological preparations for the treatment of cancer; medicines for the treatment of cancer diseases, autoimmune disease, and neurological disorders; reagents and media for medical and veterinary diagnostic purposes; biological tissue cultures for veterinary purposes; pharmaceutical preparations for treatment of inflammatory disorders and immunoregulatory disorders; pharmaceutical preparations for treatment of human immune diseases and conditions; pharmaceuticals for the treatment of viral infections, neoplastic, metabolic, autoimmune or inflammatory disorders” in Class 5, “Connected vehicles, namely, land vehicles connected to internet; driverless cars being autonomous cars; structural parts and fittings for autonomous vehicles” in Class 12, “Two-wheeled motor vehicles; Electric cars; Electric motors for motor cars; Electric motors for land vehicles” in Class 12, “Handbags, travelling bags, brief cases, travelling trunks, pocket wallets, purses, rucksacks, umbrellas, parasols” in Class 18, “Cotton thread and yarn, linen thread and yarn, rayon thread and yarn, sewing thread and yarn, silk thread and yarn, spun cotton, spun silk, woolen thread and yarn” in Class 23, “Cotton fabrics, elastic woven fabric, flannel, jersey fabric, knitted fabric, linen cloth, moleskin fabric not for medical use, rayon fabric, ramie fabric, silk fabric, upholstery fabrics, velvet, woolen fabric,” in Class 24, “sheets, blankets and towels, billiard cloths, blinds of textile, canvases for tapestry or embroidery, cotton fabrics, elastic woven materials for domestic use, household use, and for use in the manufacture of clothing, upholstery, and drapery, fabrics for domestic use, household use, and for use in the manufacture of clothing, upholstery, and drapery, fabrics of imitation animal skins, fustians, jersey fabrics, linen cloths, fabrics used in the making of hat lining, moleskins (fabrics), non-woven textile fabrics for domestic use, household use, and for use in the manufacture of clothing, upholstery, and drapery, pillowcases, ramie fabrics, rayon fabrics, sleeping bags (sheeting for use in making sleeping bags), tablecloths (not of paper), table linens (textile), velvets, woolen fabrics, worsted fabrics, wool fabric” in Class 24, and “jackets, jumpers; knitwear, namely, shirts, dresses and sweaters; shirts, suits,” in Class 25.  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 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 are related.

 

Further, the respective goods are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that clothing goods and footwear are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and 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.  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). See attached evidence from:

·         Uniqlo:

o   http://www.uniqlo.com/us/en/men;

o   http://www.uniqlo.com/us/en/men/accessories-and-shoes;

·         H&M:

o   http://www2.hm.com/en_us/women.html;

o   http://www2.hm.com/en_us/men/new-arrivals/shoes-accessories.html;

·         Superdry:

o   http://www.superdry.com/us/new-in/mens-new-in; and

o   http://www.superdry.com/us/mens/shoes.

 

Thus, upon encountering SAMSUNG and SAMSUNG, SAMSUNG, SAMSUNG BIOEPIS, SAMSUNG, SAMSUNG BIOLOGICS, ACTIVATED BY SAMSUNG SDI, SAMSUNG, SAMSUNG, and SAMSUNG, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. As such, registration must be refused under Trademark Act Section 2(d).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).

 

ADVISORY - CLAIM OF OWNERSHIP OF CITED REGISTRATIONS

 

If the marks in the cited registrations are owned by applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)        Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)        Submit copies of documents evidencing the chain of title; or

 

(3)        Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 1920552, 1920554, 5009975, 5899721, 4779715, 4745907, 4820929, 5235363, and 6033270.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Applicant should note the following additional ground for refusal.

 

SECTION 44(e) REFUSAL – APPLICANT IS NOT THE OWNER OF THE FOREIGN REGISTRATION

 

Registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration on the filing date of the U.S. application.  See 15 U.S.C. §1126(e); TMEP §1005. 

 

In an application filed under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application.  TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  However, in this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as Samsung C&T Corporation, a United Kingdom Corporation, while the foreign registration sets forth the owner as Samsung C&T Corporation, a North Korea Corporation (Democratic People’s Republic of Korea). 

 

If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant on or before the filing date of the U.S. application.  See TMEP §§1005, 1006.

 

If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant will have to amend to an acceptable basis, such as Section 1(a) or 1(b).  See TMEP §§806.03, 1005.  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.  See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

INFORMATION REQUIRED TO ESTABLISH OWNERSHIP OF FOREIGN APPLICATION

 

Applicant’s submission of a foreign registration that specifies an owner different from that of the U.S. applicant raises a question regarding the applicant’s ownership of the underlying foreign application.  See TMEP §1005.  In an application filed under Section 44(d), an applicant must be the owner of the foreign application on the filing date of the U.S. application.  TMEP §1005; see In re De Luxe, N.V., 990 F.2d at 609, 26 USPQ2d at 1477; In re Tong Yang Cement Corp., 19 USPQ2d at 1690-91.  Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date.  TMEP §1005; see 37 C.F.R. §2.61(b).

 

Applicant may establish ownership of the foreign application by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application.  See TMEP §§1005, 1006. 

 

If applicant cannot establish ownership of the foreign application, applicant will not be entitled to the Section 44(d) priority filing date and the priority claim will be deleted.  TMEP §1005. 

 

ENGLISH TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested: 

 

The English translation of “SAMSUNG” in the mark is “THREE STARS”. 

 

TMEP §809.03.  See attached translation evidence from http://news.samsung.com/global/20-things-you-didnt-know-about-samsung#:~:text=1.,like%20stars%20in%20the%20sky.

 

IDENTIFICATION OF GOODS

 

Applicant’s identification of goods includes “Furniture made from horn, bone, ivory, whalebone” in Class 20. The Endangered Species Act (ESA) and associated regulations prohibit importing, exporting, selling, delivering, receiving, carrying, transporting, or shipping in interstate or foreign commerce endangered and threatened species ivory, bone, whalebone, horn, and tusks other than for excepted goods. See 16 U.S.C. §§1531-1544; TMEP §1401.14(f). Applicant may delete these entries from the identification of goods or applicant must provide answers to the request for information outlined in the section below.

 

The identification of goods contains parentheses.  Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods that have been deleted from registrations, (2) goods not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification.  See TMEP §§1402.04, 1402.12.  The only exception for including parenthetical information in identifications is if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  See TMEP §1402.12.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Specifically, the entry for “Textiles and textile goods, not included in other classes; namely, textiles used as lining for clothing” includes a semicolon before the wording “namely.” Applicant should replace semicolon with a comma in the identification of goods. 

 

The wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including” and “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

The wording “Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry” and “tanning substances” in the identification of goods in Class 1 is indefinite and must be clarified because the goods have not been identified with adequate specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “preservatives against rust and against deterioration of wood” and “metals in foil and powder form for painters, decorators, printers and artists” in Class 2 in the identification of goods is indefinite and must be clarified because have not been identified with adequate specificity.  Id. 

 

The wording “mordants” in the identification of goods for International Class 2 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “mordants for metals” in Class 1 or “wood mordants” in Class 2.

 

The wording “other substances for laundry use” in the identification of goods in Class 3 is indefinite and must be clarified because the goods have not been identified with adequate specificity using their common commercial name.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “soap” in the identification of goods for International Class 3 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “non-medicated soap” in Class 3 or “medicated soap” in Class 5.

 

The wording “lubricants” in the identification of goods for International Class 5 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “industrial lubricants” in Class 4 or “personal lubricants” in Class 5.

 

Applicant has classified “wetting compositions” in International Class 4; however, the proper classification is International Class 1.  Therefore, applicant may respond by (1) 1 reclassifying these goods 1 in the proper international class, (2) deleting “wetting” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Further, the wording “wetting compositions” in the identification of goods is indefinite and must be clarified because the goods have not been identified with adequate specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “candles and wicks for lighting” in the identification of goods is indefinite and must be clarified because the nature of the wicks has not been identified with adequate specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Pharmaceutical preparations for diagnosis purposes” and “veterinary preparations for diagnosis purposes” in the identification of goods in Class 5 is indefinite and must be clarified because the disease or condition to be prevented or treated has not been adequately identified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “dietetic substances adapted for medical use” and “materials for dressings” in the identification of goods in Class 5 is indefinite and must be clarified because the goods have not been identified with adequate specificity. Id. 

 

The wording “apparatus for locomotion by land, air, or water, namely, trains” in the identification of goods in Class 12 is indefinite and must be clarified because the goods have not been identified with adequate specificity. Id. 

 

The wording “stopping” in the identification of goods in Class 17 is indefinite and must be clarified because the goods have not been identified with adequate specificity. Id. 

 

The wording “trunks” and “harness” in the identification of goods in Class 18 is indefinite and must be clarified because the goods have not been identified with adequate specificity. Id. 

 

The wording “Building materials, not of metal” in the identification of goods in Class 19 is indefinite and must be clarified because the goods have not been identified with adequate specificity. Id. 

 

The wording “nets” in the identification of goods for International Class 22 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “netting” in Class 22 or “mosquito nets” in Class 24.

 

The wording “awning” in the identification of goods for International Class 22 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “awnings of metal” in Class 6 or “awnings of textile or synthetic materials” in Class 22.

 

The wording “padding and stuffing materials (except of rubber or plastics)” in the identification of goods for International Class 22 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “padding and stuffing materials of paper” in Class 16 or “Padding and stuffing materials not of rubber, paper or plastic” in Class 22.

 

The wording “canvas bags for storage” in the identification of goods is indefinite and must be clarified because the nature of what is being stored in the canvas bags has not been adequately identified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances, namely, tanning agents used in the manufacture of leather; adhesives used in industry; mordants for metals; wetting compositions in the nature of wetting agents

 

Class 2: Paints; varnishes; lacquers; preservatives against rust and against deterioration of wood in the nature of coating; colorants; wood mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists for use in painting decorating and art

 

Class 3: Bleaching preparations and other substances in the nature of laundry soap for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices

 

Class 4: Industrial oils and greases; industrial lubricants; dust absorbing, wetting and binding compositions; fuels including namely, motor spirit and illuminants; candles and wicks for candles for lighting

 

Class 5: Pharmaceutical preparations for diagnosis purposes of [further specify disease or condition to be prevented or treated, e.g., cancer]; veterinary preparations for diagnosis purposes of [further specify disease or condition to be prevented or treated, e.g., cancer]; sanitary preparations for medical purposes; dietetic substances in the nature of [further clarify Class 5 goods, e.g., foods and beverages] adapted for medical use; food for babies; medical plasters; materials for dressings for [further specify purpose, e.g., wounds]; material for stopping teeth; dental wax; disinfectants; preparations for destroying vermin; fungicides; herbicides; medicated soaps; personal lubricants

 

Class 6: awnings of metal

 

Class 12: Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; apparatus for locomotion by land, air, or water, namely, freight trains, boats, and airplanes

 

Class 16: padding and stuffing materials of paper

 

Class 17: Rubber, raw or semi-worked; gutta-percha; gum, raw or semi-worked; asbestos, mica, raw or partly processed; plastic material in extruded form for use in production; packing, stopping in the nature of padding materials of rubber or plastic and insulating materials; non-metallic flexible pipes

 

Class 18: Leather and imitations of leather, animal skin, hides; traveling trunks and traveling bags; umbrellas, parasols and walking sticks; whips; harnesses; saddlery

 

Class 19: Building materials, not of metal, namely, [further clarify goods, e.g., reinforcing materials not of metal for building purposes]; non-metallic rigid pipes for construction purposes; asphalt, pitch and bitumen; non metallic transportable buildings; non-metal monuments

 

Class 20: Furniture made from wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell amber, mother-of pearl, meerschaum and substitutes for all these materials, or from plastics

 

Class 22: Ropes; string; netting; tents; awnings of textile or synthetic materials; tarpaulins; sails; sacks for the transport and storage of materials in bulk; canvas bags for storage of [further clarify what is being stored, e.g., food]; padding and stuffing materials, except of paper, rubber or plastics; raw fibrous textile materials

 

Class 23: [no change]

 

Class 24: Textiles and textile goods, not included in other classes, namely, textiles used as lining for clothing; mosquito nets

 

Class 25: [no change]

 

Class 28: [no change]

 

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

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least 17 classes; however, applicant submitted fees sufficient for only 15 classes.  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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

INFORMATION ABOUT APPLICANT’S GOODS REQUIRED

 

In addition, applicant must submit a written statement indicating whether all the goods identified in the application comply with relevant federal law, including the Endangered Species Act (ESA), 16 U.S.C. §§1531-1544, Marine Mammal Protection Act (MMPA), 16 U.S.C. §§1361-1407, and African Elephant Conservation Act, 16 U.S.C. §§4201-4246.  See TMEP §1401.14(f).  This law prohibits or restricts commerce related to goods comprised of ivory, bone, whalebone, and horn.  That is, the ESA and associated regulations prohibit importing, exporting, selling, delivering, receiving, carrying, transporting, or shipping in interstate or foreign commerce endangered and threatened species ivory, bone, whalebone, horn, and tusks other than for excepted goods, MMPA and associated regulations prohibit the possession, transport, purchase, sale, import, or export of a marine mammal or marine mammal products taken in violation of the MMPA other than for excepted purposes, and the African Elephant Conservation Act prohibits importing and exporting African elephant ivory.

 

Finally, applicant must provide written responses to the following questions:

 

(1)        Do the ivory, bone, whalebone, or horn goods fall under an exception in the ESA, MMPA, or African Elephant Conservation Act?

 

(2)        If these goods fall under an exception in the ESA, MMPA, or African Elephant Conservation Act, please explain how the goods constitute an exception.  For example, if the goods qualify as exempted antiques under the ESA, please provide such information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

QUESTIONS

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusals and requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

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

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@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 November 30, 2021 for

U.S. Trademark Application Serial No. 97045449

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.