Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This is in response to applicant’s correspondence of December 8, 2009 regarding the trademark application identified above. In office action number 1, the examining attorney:

 

(1)   Refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d),

(2)   Required applicant to provide a substitute specimen, and

(3)   Advised applicant of a possible additional ground for refusal based on Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127

 

In its response:

 

(1)   Applicant provided arguments against the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d). After applicant submitted the response, one of the cited registrations, U.S. Registration No. 2714986, was cancelled. Accordingly, as to this registration this refusal is no longer outstanding. Regarding the remaining registration, the examining attorney has carefully considered applicant’s arguments but is not convinced that confusion is not likely between applicant’s mark and the registered mark. Accordingly, this refusal is continued and made FINAL.

(2)   Applicant indicated in its response that it was providing a substitute specimen. However, the specimen is not in the record. Accordingly, this requirement is continued and made FINAL.

(3)   Because applicant did not provide the necessary specimen, there remains a potential for the additional refusal. Accordingly, this advisory is repeated, below. If applicant provides a request for reconsideration with the new specimen and the specimen shows the mark is ornamental, this will trigger a new non-final refusal.

 

The following refusal and requirement are continued and made FINAL.

 

FINAL REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3262258.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registration document provided earlier.

 

Based on the du Pont factors, the likelihood of confusion determination in this case is structured as a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  Then the goods 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 this case, applicant’s mark is HALL OF FAMERS, for use on

 

apparel, namely, t-shirts, sweatshirts, hats and jackets

 

The registered mark is FUTURE HALL OF FAMER, used on

 

Clothing, namely, shirts, hats, T-shirts, sweatshirts, sweaters, and socks for infants, toddlers, and children

 

SIMILARITY OF THE MARKS

 

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).

 

In this case, applicant’s mark is similar to the registered mark in appearance, sound, meaning, connotation and commercial impression. Applicant has argued that the examining attorney has not looked at the marks as a whole but has compared the parts. However, it is only in their entireties that the marks are similar. The wording HALL OF FAMERS in applicant’s mark is contained completely within the registered mark FUTURE HALL OF FAMER, but for the S at the end of applicant’s mark.

 

The ultimate S in applicant’s mark is not sufficient for consumers to notice it. Trademarks consisting of the singular and plural forms of the same term are essentially the same mark.  See Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL). Consumers will not notice the S, and therefore are likely to think that the marks FUTURE HALL OF FAMER and HALL OF FAMERS are from a single source.

 

Additionally, because the wording HALL OF FAMER(S) is contained in both marks, consumers are not necessarily likely to recall that one has the additional word FUTURE in it. If consumers do notice and remember that one mark has the word FUTURE in it, they are likely to conclude that one brand represents a clothing line from a particular source and the other represents another clothing line from that same source. They will believe this because clothing manufacturers regularly have multiple design lines with similar names, sharing one or more elements. The attached evidence discloses:

 

(1)   Trademarks owned by GAP (Apparel) LLC:

a.       U.S. Registration No. 3105229 for the mark GAP SELECT used on clothing, and

b.      U.S. Registration No. 3155030 for the mark GAP EDITION used on clothing.

c.       U.S. Registration No. 2784298 for the mark GAP BODY used on clothing,

d.      U.S. Registration No. 2761754 for the mark GAP KIDS used on clothing, and

e.       U.S. Registration No. 2659476 for the mark GAP used on clothing.

f.        Pages from the GAP website showing use of the marks GAP, GAP KIDS and GAP SELECT on clothing.

(2)   Trademarks owned by Abercrombie & Fitch Trading Co.:

a.       U.S. Registration No. 3381674 for the mark ABERCROMBIE & FITCH used on clothing, 

b.      U.S. Registration No. 3484799 for the mark ABERCROMBIE used on clothing, and

c.       U.S. Registration No. 3494503 for the mark A. FITCH used on clothing

d.      Pages from the official websites of ABERCROMBIE and ABERCROMBIE & FITCH, showing the marks ABERCROMBIE & FITCH and ABERCROMBIE KIDS used on clothing.

 

This evidence shows that consumers will see similar, but not identical, trademarks coming from a single source of clothing lines, with the different wording in the marks apparently representing different clothing lines coming from that single source. Because of this, consumers will think that HALL OF FAMERS and FUTURE HALL OF FAMER identify different clothing lines from a single source, if they notice and recall the differences between the marks.

 

For these reasons, applicant’s mark is similar to the registered mark. When an applicant’s mark is similar to a registered mark, confusion is likely if applicant’s goods are similar to the goods on which the registered mark is used.

 

SIMILARITY OF THE GOODS

 

The goods 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, they need only be related in some manner, 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 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).

 

In this case, applicant’s goods are identical to the goods sold under the registered mark, based on the wording in the application and registration. Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

                                                           

When the application (or registration) describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii).

 

All of the goods applicant has identified in its application are contained within the identification of goods of the registration, with the exception of  “jackets.” While these are not specifically contained within the identification of goods of the registration, and therefore not identical to the goods sold under the registration, jackets are similar to the other goods because all are “clothing.” The decisions in the clothing field have held many different types of apparel to be related under Trademark Act Section 2(d).  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (brassieres and girdles related to slacks for men and young men). Because of this, applicant’s “jackets” would be considered similar to all of the other clothes sold under the registered mark.

 

Applicant argues that its goods are sold exclusively in its own store. However, this is not supported by the identification of goods, which has no such limitation. Neither the application nor the registration contains 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). Even if applicant were to limit its identification of goods to only clothing sold “on site,” there is no such limitation on the identification of goods in the registration. Additionally, consumers could encounter the registered goods anywhere (including at some other “hall of fame”) and still conclude that the goods come from a single source because of the similarity of the trademarks.

 

Based on the foregoing, applicant’s goods are at least similar to the goods on which the registered mark is used. Because applicant’s mark is similar to the registered mark and applicant’s goods are also at least similar to the goods on which the registered mark is used, applicant’s mark is likely to be confused with the registered mark and may not register.

 

FINAL REQUIREMENT - SPECIMEN

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the application.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

In this case, the original specimen is an advertisement for the goods. Advertisements are not acceptable as specimens showing use of the mark on goods. There is no substitute specimen in the record. The examining attorney acknowledges that applicant may have provided a substitute specimen with its response, but that the specimen may have bee misplaced in the mail or during scanning at the Office. To avoid misplaced specimens, applicant should consider filing a request for reconsideration online. Uploaded specimens provided with an online response are significantly less likely (almost impossible) to be misplaced from the file.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark for the identified goods.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Applicant is encouraged to submit its response online. If it does, the online response form should launch the proper declaration to sign with the response, when applicant elects “yes” in response to item “Do you want to submit a Signed Declaration?” If the applicant provides a paper response to this office action, the following is a sample declaration for a verified substitute specimen for use in a paper response:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

SECTIONS 1, 2 AND 45 ADVISORY – MERELY ORNAMENTAL

 

Applicant is advised that, upon consideration of the substitute specimen, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, is merely ornamental, and as such does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.

 

The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature:  the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods or services, promotion of the applied-for mark as a trademark, and the practice of the relevant trade.  See In re Todd Co., 290 F.2d 597, 129 USPQ 408 (C.C.P.A. 1961); In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579 (TTAB 1976); TMEP §§1202.03 et seq.

 

The foregoing refusal and requirement are continued and made FINAL.

 

RESPONSE GUIDELINES – FINAL REFUSALS

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Fred Carl III/

Law Office 108

571 272 8867 voice

571 273 9108 fax for official communication only

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.