UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

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.

Section 2(a) Refusal – False Connection

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Adidas AG.  Although Adidas AG is not connected with the goods provided by applicant under the applied-for mark, Adidas AG is so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §§1203.03, 1203.03(e).  See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

The following is required for a showing of false connection under Trademark Act Section 2(a):

(1)  The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution;

(2)  The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;

(3)  The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

(4)  The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507 (TTAB 2009); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); TMEP §1203.03(e); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

The fact that applicant did not intend to adopt the name of, or trade upon the goodwill of, the named person or institution does not obviate a false connection refusal.  Trademark Act Section 2(a) does not require such intent.  TMEP §1203.03(e); see, e.g., S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221 (TTAB 1987); Consol. Natural Gas v. CNG Fuel Sys., Ltd., 228 USPQ 752 (TTAB 1985).  However, evidence of such intent is highly probative that the public will make the intended false connection.  Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); TMEP §1203.03(e).

The fact that purchasers would realize, at some point after purchase, that no connection exists between the listed goods and/or services and the person or institution falsely connected, is not relevant.  The focus is on “the initial reaction or impact of the mark when viewed in conjunction with the applicable goods or services.”  In re U.S. Bicentennial Soc’y, 197 USPQ 905, 906 (TTAB 1978) (internal punctuation omitted) (quoting In re Nat’l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976)).

Of note, the term “person” includes a juristic person as well as a natural person.  The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.  TMEP §1203.03(a).

Moreover, the term at issue need not be the actual, legal name of the party falsely associated with applicant’s mark to be unregistrable.  TMEP §1203.03(a); see, e.g., Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (holding the wording MARGARITAVILLE to be the persona of singer Jimmy Buffett), Dallas Cowboys Football Club v. America’s Team Props., 616 F.Supp. 2d 622, 645 (N.D. Tex. 2009) (Defendant’s use of AMERICA’S TEAM falsely suggests connection with the Dallas Cowboys and the National Football League).  The term must, however, be so uniquely and unmistakably associated with the named party as to constitute that party’s name or identity.  TMEP §1203.03; see, e.g., In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett, 226 USPQ at 429.

The examining attorney attaches various web pages showing that it is common for designers/fashion houses to offer a wide variety of merchandise (including the types of goods included in the applicant’s identification of goods) with their trademark affixed.  Consumers are aware of this practice and could believe that the applicant has a connection to the named juristic person/institution, and that the goods originate from said juristic person/institution.  The examining attorney also attaches web page printouts illustrating the fame of the juristic person/institution.

Applicant should note the following additional ground for refusal.

Section 2(d) Refusal

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 0883592, 0891222, 1050759, 1253013, 1300627, 1428946, 1931827, 2138288, 3255820, 3357349, 3686084, and 3881463.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

Applicant’s mark is ADIDAS while the registered marks in whole or in part of the identical term ADIDAS.

In this case, the parties’ marks have the same commercial impression based on shared identical wording.  Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

Turning to the comparison of the goods/services, the goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Moreover, where the marks of the respective parties are identical or virtually identical, there need be only a viable relationship between the relevant goods and/or services to support a finding of likelihood of confusion.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).

In this case, the parties specify closely related goods that are frequently offered under the same mark, and in the same channels of trade.  (See attached web page printouts.)  The trademark examining attorney has also attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein are of a kind that may emanate from a single source under a single mark.  See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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, 1025 (Fed. Cir. 1988).

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Potential Likelihood of Confusion

The filing dates of pending Application Serial Nos. 79058736 and 85190310 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

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 marks in the referenced applications.  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.

Applicant must respond to the requirement(s) set forth below.

Identification and Classification of Goods

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

Applicant has classified the following goods in International Class 005:

“Fragrance products for land vehicles, aircraft, marine craft, commercial, industrial and personal use, namely, … fragrances, colognes, after shaves and perfumes; … license plate frames, seat covers, safety seats, seat cushions, steering wheel covers, … floor mats, … travel mugs, … decals, … greeting cards”.

However, the proper classifications are as set forth below.  Therefore, applicant must either (1) add the below specified international classes to the application and reclassify these goods in the proper international class, or (2) delete the above-stated wording from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 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.

The following wording in the identification of goods is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification.  Moreover, some of the wording is also too broad and could include goods classified in other international classes:

“deodorizers, … car accessories such as key chains, license plates, … blankets, pillows, … sunshades, interior organizers, … tire covers, … travel and neck pillows; gift wrap, … such as holiday, occasion, get well, sympathetic and inspirational cards”.

Applicant may amend the identification and classification to the following, if accurate:

“Fragrance products for land vehicles, aircraft, watercraft, personal, commercial, industrial and home use, namely, fragrances, colognes, after shaves and perfumes” [in International Class 003]

“Fragrance and deodorizing products for land vehicles, aircraft, watercraft, personal, commercial, industrial and home use, namely, air fresheners and air deodorizers” [in International Class 005]

“Car accessories, namely, metal key chains and metal license plates” [in International Class 006]

“Car accessories, namely, license plate frames, seat covers, safety seats, seat cushions, steering wheel covers, car window shades, truck bed storage organizers, and spare tire covers” [in International Class 012]

“Car accessories, namely, decals; gift wrapping paper and greeting cards in the nature of holiday, occasion, get well, sympathetic and inspirational greeting cards” [in International Class 016]

            “Car accessories, namely, leather key chains” [in International Class 018]

“Car accessories, namely, neck-supporting pillows, non-metal and non-leather key chains” [in International Class 020]

“Car accessories, namely, travel mugs” [in International Class 021]

“Car accessories, namely, travelling blankets” [in International Class 024]

“Car accessories, namely, floor mats” [in International Class 027].

TMEP §§1402.01 and 1402.03.  [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

Insufficient Fees/Combined Applications

The application identifies goods that are classified in at least six classes; however, the fees submitted are sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional classes.

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1)        LIST GOODS/SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

Additional Information Required

Due to the notoriety of the institution or person(s) named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person(s) or institution named in the mark has any connection with Applicant’s goods, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(e).  

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

Entity Unclear

Applicant must specify what type of entity is applying, e.g., an individual, partnership, corporation or joint venture.  See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

(571) 272-9284

nelson.snyder@uspto.gov (Informal comms only Include Serial No.)

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.