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:

 

INTERNATIONAL REGISTRATION NO. 0844109

 

This is a PROVISIONAL FULL REFUSAL of the trademark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney.  See 37 C.F.R. §2.193(e)(2)(ii).  Otherwise, applicant’s authorized attorney must respond on applicant’s behalf.  See 37 C.F.R. §2.193(e)(2)(i).  However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:

 

(1)  Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)  Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.

 

Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b).  That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things.  See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01.  If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action.  See 37 C.F.R. §2.193(e)(2)(ii).

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:

 

The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served.  15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610.  Such designations may be filed online at http://www.gov.uspto.report/teas/index.html. 

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Summary of Issues that Applicant Must Address

 

1. Trademark Act Section 2(d) Refusal - Likelihood of Confusion
2. Requirement to Specify Entity Type and Citizenship
3. Requirement to Clarify the Identification of Goods

* Applicant may, but is not required to, address the reference to a prior pending application

 

 

Trademark Act Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3724412, 4010319, 4013837, and 4073119.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations at Attachment 1.

 

Applicant’s mark is ENDURA for “Articles of clothing, footwear, headgear, and gloves; all being for sports.”  Reg. No. 3724412 is ENDURO for “socks, namely, running socks for men, women, and children.”  Reg. No. 4010319 is ENDURAMOMS for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Beanies; Children's and infants' cloth bibs; Clothing for athletic use, namely, padded shorts; Fabric belts; Fleece pullovers; Fleece vests; Hooded pullovers; Long-sleeved shirts; Moisture-wicking sports shirts; Panties, shorts and briefs; Shirts for infants, babies, toddlers and children; Socks; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Wearable garments and clothing, namely, shirts; Women's hats and hoods; Yoga shirts.”  Reg. No. 4013837 is ENDURA-FOAM for “footwear.”  Reg. No. 4073119 is ENDURAFIT for “Apparel worn under, with or as athletic outerwear and uniforms made from materials with moisture wicking capability, namely, shirts, t-shirts, jerseys, tank tops, sweatshirts, bottoms, leggings, jackets, hats, headwear, arm warmers, and biking gloves.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq. 

 

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)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression; greater weight is given to that dominant feature in determining whether the marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b)(viii), (c)(ii).

 

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).

 

Reg. No. 3724412

 

Applicant’s mark, ENDURA, and registrant’s mark, ENDURO, differ by only one letter.  Thus, the marks appear very similar and have a similar sound.  They also have a similar connotation, as both marks are suggestive of “endurance.”  For these reasons, the marks have a similar overall commercial impression.  

 

Reg. Nos. 4010319, 4013837, and 4073119

 

Applicant’s mark, ENDURA, is highly similar to the registered marks, ENDURAMOMS, ENDURAFIT and ENDURA-FOAM, in that applicant’s mark is identical to the first term that forms each of the registered marks.  Although each of the registered marks includes a different second term, these second terms are either highly suggestive (i.e., MOMS) or merely descriptive (i.e., FIT and FOAM).  Thus, even if potential purchasers realize the apparent differences between applicant’s mark and the registered marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant’s goods sold under the ENDURA mark constitute new or additional goods from the same sources as the goods sold under the ENDURAMOMS, ENDURAFIT and ENDURA-FOAM marks with which they are acquainted or familiar, and that applicant’s proposed mark is merely a variation of the registrants’ marks.  While the second term in each of the registered marks distinguishes those marks from one another, applicant’s mark does not include any additional elements that would distinguish it from the registered marks.

 

Relatedness of the Goods/Similarity of the Trade Channels

 

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 to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

Applicant’s goods are broadly identified as “Articles of clothing, footwear, headgear, and gloves; all being for sports.”  Applicant’s identification would encompass the goods identified in Reg. No. 3724412, i.e., “socks, namely, running socks for men, women, and children,” because such goods are a type of sports clothing.  They would also encompass many of the goods identified in Reg. Nos. 4010319 and 4073119, which identify various types of athletic apparel, including clothing items, headwear and gloves.  Finally, the goods identified in Reg. No. 4013837, i.e., “footwear,” are identified broadly and would encompass the footwear for sports identified by applicant.  Such goods are considered legally identical for purposes of a Section 2(d) analysis.

 

It is also noted that the types of goods identified by applicant and registrants are sold in the same trade channels, namely, stores specializing in athletic and sports clothing.

 

Because applicant’s mark is highly similar to the registrants’ marks, and because applicant’s goods are legally identical or closely related to registrants’ goods, there is a likelihood of confusion as to the source of the goods.

 

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

 

 

Application Not Entitled to Register – One Pending Application with Earlier Filing Date

 

The filing date of pending Application Serial No. 85444330 precedes applicant’s filing date.  See attached referenced application at Attachment 2.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 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.

 

 

Requirement to Specify Entity Type and Citizenship

 

Applicant must specify its form of business or type of legal entity and its foreign country of organization or incorporation.  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).  This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of an international registration to the U.S.”).  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). 

 

Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent thereof.  See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04.  For an association, applicant must also specify whether the association is incorporated or unincorporated.  TMEP §803.03(c).

 

If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located.  See TMEP §803.04.  To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.  See id.

 

 

Requirement to Clarify the Identification of Goods

 

The wording “articles of clothing” in the identification of goods is indefinite and must be clarified because it does not specify the types of clothing for which the mark is used.  See TMEP §§1402.01, 1402.03.  Applicant must amend the identification by inserting the word “namely,” after “clothing” and indicating the specific types of clothing items (e.g., shirts, pants, coats, dresses).  See TMEP §§1402.01, 1402.03(a). 

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, although clothing can be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, and 18), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods.

 

In addition, the wording “headgear” and “gloves” that are “for sports” in the identification of goods is too broad and must be clarified to specify the type(s) of Class 25 headgear and gloves for sports because this wording could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, any modification to this wording must identify goods in International Class 25, the classification specified in the application for these goods.

 

Finally, the limiting wording “all being for sports” that appears in the identification set forth in the application must be incorporated into the descriptions of the other goods listed.

 

Applicant may adopt the following identification of goods, if accurate:

 

International Class 25:  Articles of clothing for sports, namely, {specify types in Class 25, e.g., shirts, pants, shorts and jackets}; footwear for sports; headgear for sports, namely, {specify types in Class 25, e.g., hats and caps};gloves for sports, namely, {specify types in Class 25, e.g., ski gloves and snowboard gloves}

 

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. 

 

For assistance with identifying goods 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.

 

 

If applicant has any questions about this Office action, please contact the undersigned examining attorney.

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

Phone: 571.272.7187

Official Fax: 571.273.9106

linda.lavache@uspto.gov (informal inquiries only)

 

 

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.