To:
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`Subject:
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`Sent:
`Sent As:
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`MARK A. WATKINS(iplaw@vorys.com)
`U.S. Trademark Application Serial No. 87755747 - YOGA CLOUD - - 050978-
`32
`June 11, 2024 09:19:03 PM EDT
`tmng.notices@uspto.gov
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`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No. 87755747
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`Mark: YOGA CLOUD
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`Correspondence Address:
`Mark A. Watkins
`Vorys, Sater, Seymour and Pease LLP
`P.O. Box 2255
`Columbus OH 43216-2255
`UNITED STATES
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`Applicant: MBG BRYBELLY OPCO, LLC
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`Reference/Docket No. 050978-32
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`Correspondence Email Address: iplaw@vorys.com
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`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
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`Issue date: June 11, 2024
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`The Office has reassigned this application to the undersigned trademark examining attorney.
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`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has reviewed applicant’s request and determined the request did not: (1) raise a
`new issue, (2) resolve the outstanding issue, or (3) present analysis and arguments that were persuasive
`or shed new light on the outstanding issue. TMEP §§715.03(a)(ii)(B), 715.04(a).
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`Applicant has submitted four website examples of third-party use of marks including the component
`"CLOUD" (or variation thereof) to show that this portion of the mark in the cited registration is
`commercially weak and should not be afforded a broad scope of protection. See Juice Generation, Inc.
`v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay
`Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d
`1689, 1693 (Fed. Cir. 2005); TMEP §1207.01(d)(iii). Of these four website examples, two combine the
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`term "CLOUD" in a unitary fashion with distinctive other matter (WHITECLOUDZ and CLOUD
`ATLAS YOGA MAT).
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`Evidence of third-party use falls under the sixth du Pont factor, which assesses the number and nature
`of similar marks in use on similar goods and/or services. In re E. I. du Pont de Nemours & Co., 476
`F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Considerable or ubiquitous evidence of third-
`party use of similar marks on similar goods and/or services can be relevant to show that consumers
`have become conditioned by encountering so many similar marks in the marketplace that they
`distinguish between them based on minute distinctions, such that the mark or component should be
`considered relatively weak and entitled to only a narrow scope of protection. See Jack Wolfskin
`Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
`1373-74, 116 USPQ2d 1129, 1136-37 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794
`F.3d at 1338-39, 115 USPQ2d at 1674 (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
`Maison Fondee en 1772, 396 F.3d at 1373, 73 USPQ2d at 1693); In re Coors Brewing Co., 343 F.3d
`1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
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`However, evidence comprising only a small number of third-party uses of similar marks is generally
`entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d
`1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Prods., Inc.,
`474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). The amount of evidence of third-party use
`provided by applicant in this case falls short of the “ubiquitous” or “considerable” use of similar marks
`found probative in the cases. See In re i.am.symbolic, llc, 866 F.3d at 1329, 123 USPQ2d at 1752
`(citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
`797 F.3d at 1374, 116 USPQ2d at 1136-37; Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d at
`1339, 115 USPQ2d at 1674). Thus, the evidence is insufficient to establish that a portion or all of the
`mark is commercially weak and entitled to a narrow scope of protection.
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`Moreover, even if applicant's evidence of third-party use was sufficient to demonstrate weakness of the
`term "CLOUD" with respect to yoga mats, the Court of Appeals for the Federal Circuit and the
`Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive
`are still entitled to protection under Section 2(d) against the registration by a subsequent user of a
`similar mark for closely related goods and/or services. TMEP §1207.01(b)(ix); see King Candy Co. v.
`Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max
`Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). Thus, this protection under Section 2(d)
`extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re
`Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent
`Software, Inc., 913 F.2d 942, 946, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research &
`Trademark Corp., 793 F.2d 1276, 1278, 230 USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d
`305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978)).
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`refusal made
`following
`the
`Accordingly,
`2023, is maintained and continued:
`
`
`the Office action dated October 4,
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`final
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`in
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`•
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`the Section 2(d) refusal in view of Registration No. 6880214.
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`See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal. See TMEP §715.04(a).
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`If applicant has not filed an appeal and time remains in the response period for the final Office
`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board. TMEP §715.03(a)(ii)(B).
`
`
`/Jeri Fickes/
`Jeri Fickes
`Examining Attorney
`LO107--LAW OFFICE 107
`(571) 272-9157
`Jeri.Fickes@uspto.gov
`
`
`
`
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on June 11, 2024 for
`U.S. Trademark Application Serial No. 87755747
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action. You must respond to this Office action to avoid your application abandoning. Follow
`the steps below.
`
`(1) Read the Office action. This email is NOT the Office action.
`
`(2) Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS) or the Electronic System for Trademark Trials and Appeals (ESTTA), as
`appropriate. Your response and/or appeal must be received by the USPTO on or before 11:59
`p.m. Eastern Time of the last day of the response deadline. 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.
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`GENERAL GUIDANCE
`Check the status of your application periodically in the Trademark Status &
`•
`Document Retrieval (TSDR) database to avoid missing critical deadlines.
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`•
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`•
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`Update your correspondence email address to ensure you receive important USPTO
`notices about your application.
`
`Beware of trademark-related scams . Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. Verify the correspondence originated from us by using your
`serial number in our database, TSDR, to confirm that it appears under the “Documents”
`tab, or contact the Trademark Assistance Center.
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`
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`•
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`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 is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
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`
