To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Orlandi, Inc. (denkpatentlaw@earthlink.net)
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`U.S. Trademark Application Serial No. 90037727 - KLEANTOUCH - N/A
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`May 27, 2021 11:04:19 AM
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`ecom113@uspto.gov
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial
`No. 90037727
`
`Mark:   KLEANTOUCH
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`     
`         
`   
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`Correspondence Address:   
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`     Paul M. Denk
`     763 S. NEW BALLAS
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`ROAD, SUITE 305
`         ST. LOUIS MO 63141
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`          
`    
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`Applicant:   Orlandi, Inc.
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`Reference/Docket No. N/A
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`Correspondence Email
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`Address:    
`
`   
`denkpatentlaw@earthlink.net
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`SUSPENSION NOTICE
`No Response Required
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`Issue date:   May 27, 2021
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`STATUS OF APPLICATION
`
`Pursuant to TMEP §716.01, applicant is advised of the following status of the application.  In an Office actions issued on October 20, 2020 and
`December 7, 2020, the following issues were outstanding with this application:
`
`(1)      Section 2(d) Refusal – Likelihood of Confusion
`(2)      Prior-filed Pending Application Advisory
`(3)      Classification of Goods Requirement
`
`On May 27, 2021, applicant responded to the Office action. The examining attorney has thoroughly reviewed applicant’s arguments and had
`determined the following:
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`(1)   Applicant’s arguments against the Section 2(d) Refusal are unpersuasive, and the refusal is maintained and continued.
`
`(2)   Applicant arguments against the classification of goods requirement are unpersuasive, and the refusal is maintained and continued.
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`(3)   The prior-filed application is still pending, and action on this application is suspended pending registration or abandonment of the prior-
`filed application.  TMEP §§713.02, 714.04.
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`Preliminary Response to Applicant’s Arguments
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`Applicant’s arguments against the amended classification of goods ignore the clear guidance of the ID manual, which show the hand-sanitizing
`preparations are in International Class 5.
`
`The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (also called the “Nice
`Classification” system), established by the World Intellectual Property Organization, to organize and classify goods and services for the purpose
`of registering marks.  Nice Classification has 45 numbered classes with class headings that describe in broad terms the types of goods and
`
`services in each class.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).  
`
`An applicant must adopt the appropriate international classification number for the goods and/or services identified in the application.  “ Proper
`classification allows for administrative recordkeeping, enables accurate and efficient public searches of USPTO records, and facilitates
`examination of applications filed with the USPTO by aligning fees with costs.”   In re Carlton Cellars, LLC, 2020 USPQ2d 10150, at *2 (TTAB
`2020).
`
`Classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107
`USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
`
`Accordingly, applicant may not specify the international class it prefers. The requirement to amend the classification of goods is maintained and
`continued.
`
`Applicant’s arguments against the Section 2(d) refusal also ignore clear case law. First, applicant argues that the marks are different in
`appearance as marketed and sold. However, 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)). Moreover, applicant’s
`arguments that “the mark of the current application has an obvious design [sic] is quite distinct from what is even related to anything in the prior
`and cited registration, and therefore, it is believed that the duPont factors argue in favor of the current application, rather than speculatively
`deciding that a likelihood of confusion prevails, as the examiner suggests.” Applicant’s arguments have no evidentiary basis because the
`applied-for mark, the cited registration, and the prior-pending application are all in standard characters with no design elements. Furthermore,
`applicant’s application has a Section 1(b) filing basis, and therefore the statement that the applied for mark “has an obvious design” has no
`support in the record. Regardless, the design of applicant’s goods would be irrelevant for purposes of the likelihood of confusion analysis.
`
`Finally, applicant states, “It would appear that when there is reasonable doubt, the mark of the current application should be published, to see if
`the prior registrant really feels that he can be harmed through the marketing the Applicant’s product.” [sic] On the contrary, 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).
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`Accordingly, the refusal is maintained and continued.
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`ACTION IS SUSPENDED
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`The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.  
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`The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s)
`below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the
`registered mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed
`application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.
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`            
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`- U.S. Application Serial No(s). 88829338
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`Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As
`needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP
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`§716.05.  
`No response required.  Applicant may file a response, but is not required to do so.  
`
`/Marynelle W. Wilson/
`Marynelle W. Wilson
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`Examining Attorney
`Law Office 113
`Phone: 571-272-7978
`Email: marynelle.wilson@uspto.gov
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`   
`

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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Orlandi, Inc. (denkpatentlaw@earthlink.net)
`
`U.S. Trademark Application Serial No. 90037727 - KLEANTOUCH - N/A
`
`May 27, 2021 11:04:21 AM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
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`Office Action (Official Letter) has issued
`on May 27, 2021 for
`U.S. Trademark Application Serial No. 90037727
`
`Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has
`issued an official letter.  Please follow the steps below.
`
`(1)  Read the official letter.  No response is necessary.
`
`(2)  Direct questions about the contents of the Office action to the assigned attorney below.  
`
`/Marynelle W. Wilson/
`Marynelle W. Wilson
`Examining Attorney
`Law Office 113
`Phone: 571-272-7978
`Email: marynelle.wilson@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).
`
`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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`·       Update your correspondence email address,
`application.
`
`if needed,
`
`to ensure you receive important USPTO notices about your
`
`·       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.”
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