UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 76719616
MARK: OOPS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: harmon, kenneth, l
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
The assigned examining attorney has reviewed the referenced application and determined the following.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant is seeking registration for the mark OOPS and design for “clothing, namely, shorts” in International Class 25.
The mark in Reg. No. 3786475 is OOPS! (in design form) for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; baseball caps; children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; dress shirts; fleece pullovers; golf caps; golf shirts; hats; jackets; jerseys; long sleeve pullovers; sweat jackets; sweat pants; sweat shirts; t-shirts; tee shirts” in International Class 25.
The mark in Reg. No. 4563226 is OOPS! UNDIES (in design form) for “underwear” in International Class 25.
Comparison of the Marks
Turning to the first prong of the test, comparison must be made between the applicant’s mark OOPS and design and the registered marks OOPS! in design character form and OOPS! UNDIES in design form.
In the present case, the applicant’s mark is identical in dominant part to each of the registered marks in sound, appearance, and overall commercial impression. Specifically, the applicant’s and registrants’ marks each consists in dominant part of the word “OOPS,” with only descriptive matter and design elements to distinguish the respective marks.
With regard to the mark in Reg. No. 3786475, applicant’s mark merely adds a design element wording to the registered mark. For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such 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)).
With regard to the mark in Reg. No. 4563226, the applicant’s and registrant’s word portion of the marks are identical except for the descriptive wording “UNDIES. Disclaimed matter and matter that is merely descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the registration includes a disclaimer of the wording “UNDIES” as this wording merely describes the registrant’s goods. Thus, this wording is less significant in terms of affecting the respective marks’ commercial impressions, and renders the wording “OOPS” the more dominant element of each of the marks.
Therefore, the applicant’s mark is identical in dominant part to each of the registered marks in sound and appearance. Additionally, because they are largely identical in part, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. In re i.am.symbolic, Llc, 116 USPQ2d at 1411.
Accordingly, the marks are considered to be confusingly similar.
Comparison of the Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
Here, this analysis requires comparing the applicant’s goods, “clothing, namely, shorts” in International Class 25, against the goods of the registrant, “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; baseball caps; children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; dress shirts; fleece pullovers; golf caps; golf shirts; hats; jackets; jerseys; long sleeve pullovers; sweat jackets; sweat pants; sweat shirts; T-shirts; tee shirts” in International Class 25, and “underwear” in International Class 25.
Absent restrictions in an application and/or registration, the identified goods 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Neither the application nor the registrations contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii). Further, with regard specifically to Reg. No. 4563226, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification.
Accordingly, registration is refused pursuant to Trademark Act Section 2(d).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
MARK DESCRIPTION
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the words OOPS with the first “O” being a smiling face
CONFLICTING PRIOR-FILED 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.
/Midge F. Butler/
Trademark Attorney
Law Office 107
571 272 9137
midge.butler@uspto.gov
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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.