Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1380083

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

 

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  To do so, enter the U.S. application serial number for this application and then select “Documents.”  The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

 

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.

 

SUMMARY OF ISSUES:

 

• Prior-filed applications
• Partial Section 2(d) refusal – likelihood of confusion
• Identification of goods and services

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 86310983, 87112062 and 87074811 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.

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

This partial refusal only applies to the goods in International Classes 9, 16, 25, and 35.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1743930, 3919444, 4269015, 4537089.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

APPLICANT IS ADVISED THAT A NEW SEARCH MAY BE CONDUCTED UPON APPLICANT’S RESPONSE TO THE ISSUES RAISED IN THIS OFFICE ACTION, AND THAT ADDITIONAL GROUNDS FOR REFUSAL BASED ON A LIKELIHOOD OF CONFUSION WITH A REGISTERED MARK MAY ISSUE. SEE TMEP §704.02.

 

Facts

 

Applicant’s mark XERO is for a variety of goods and services in International Classes 9, 16, 18, 21, 25, and 35. The goods relevant to this refusal are the goods and services in International Classes 9, 16, 25, and 35 (as further described in the chart below).

 

The cited marks are as follows:

 

CITED MARK AND REGISTRATION NO.	REGISTRANT’S RELEVANT GOODS & SERVICES	APPLICANT’S RELEVANT GOODS & SERVICES
U.S. Registration No. 1743930 for the mark XERO/FORM	International Class 16:   pressure-sensitive paper; namely, carbonless paper rolls or sheets	International Class 16:   Paper and cardboard; printed matter; stationery; notebooks; notebook paper; books; calendars; clipboards; ink; pens; correction pens; cases for pens; pencils; stickers; decals; laptop decals; 3D decals for use on any surface; stickers stationery; sticker books; desktop business card holders; brochures; printed brochures   International Class 35:   Retail and wholesale services; retail and wholesale services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services online
U.S. Registration No. 3919444 for the mark XERO	International Class 9:   Software for manipulating medical text and images in a web browser	International Class 9:   Computers; computer keyboards; rechargeable batteries; power banks; computer software and hardware; computer peripherals; mobile phones and related parts and accessories; headphones; sleeves for laptops; earbuds; calculators; lanyards for cameras; lanyards for mobile phones; lanyards for holding spectacles; eyeglass lanyards   International Class 35:   Retail and wholesale services; retail and wholesale services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services online
U.S. Registration No. 4269015 for the mark XERO	International Class 25:   Athletic and fitness apparel and footwear, namely, booties; caps; footwear; hats; jackets; pants; sandals; shirts; and t-shirts, that are primarily sold in retail stores specializing in running and fitness apparel and equipment, and through Applicant's Website	International Class 25:   Clothing; clothing for babies; footwear; headgear; caps headwear; tops; pyjamas   International Class 35:   Retail and wholesale services; retail and wholesale services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services online
U.S. Registration No. 4537089 for the mark XERO SHOES & Design	International Class 25:   Athletic and fitness apparel and footwear, namely, booties; caps; footwear; hats; jackets; pants; sandals; shirts; and t-shirts, that are primarily sold in retail stores specializing in running and fitness apparel and equipment, and through a website.	International Class 25:   Clothing; clothing for babies; footwear; headgear; caps headwear; tops; pyjamas   International Class 35:   Retail and wholesale services; retail and wholesale services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services online

 

 

Standard for likelihood of confusion

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Similarity of the marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

In this instance, the parties’ marks share the wording “XERO”.

 

The examining attorney notes that the applicant’s mark is identical to the following two marks:

 

CITED MARK AND REGISTRATION NO.	REGISTRANT’S RELEVANT GOODS & SERVICES
U.S. Registration No. 3919444 for the mark XERO	International Class 9:   Software for manipulating medical text and images in a web browser
U.S. Registration No. 4269015 for the mark XERO	International Class 25:   Athletic and fitness apparel and footwear, namely, booties; caps; footwear; hats; jackets; pants; sandals; shirts; and t-shirts, that are primarily sold in retail stores specializing in running and fitness apparel and equipment, and through Applicant's Website

 

Applicant’s mark is identical to the respective marks in International Classes 9 and 25. Applicant’s mark is identical to the respective mark in terms of appearance, sound, and meaning. When marks are identical, they have “have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Here, applicant’s mark for XERO is likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and services.  Id.

Applicant’s mark is also confusingly similar to the marks for XERO/FORM and XERO SHOES & Design, as these compared marks share the wording “XERO” as the first feature of the respective marks. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

In addition, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

A likelihood of confusion is not obviated by the registrant’s addition of the wording “SHOES” to the mark XERO SHOES, as this wording has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).

 

Similarly, it does not matter that the registrant’s mark features a design element, because applicant’s mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Here, the compared marks share a similar connotation created by the distinctive wording “XERO”. When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).

 

Thus, the marks are confusingly similar.

 

Relatedness of the goods and services

 

The parties’ goods and services are related.

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] 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).

 

The application uses broad wording to describe “computer software and hardware” in International Class 9, “paper and cardboard” in International Class 16, and “Clothing” and “footwear” in International Class 25, which presumably encompasses all goods of the type described, including the narrower identifications of the respective registrants.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  For example “computer software and hardware” encompasses the relevant registrant’s identification for “Software for manipulating medical text and images in a web browser.” The wording “paper and cardboard” encompasses the relevant registrant’s identification for “pressure-sensitive paper; namely, carbonless paper rolls or sheets.” Similarly, the wording “clothing” and “footwear” encompasses the narrower identifications for “Athletic and fitness apparel and footwear, namely, booties; caps; footwear; hats; jackets; pants; sandals; shirts; and t-shirts, that are primarily sold in retail stores specializing in running and fitness apparel and equipment, and through Applicant's Website.”

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). 

 

The applicant’s services in International Class 35 are also related to the goods of the relevant cited marks. Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

 

The following entities offer software, and provide retail services pertaining to such software:

 

• Microsoft: http://www.microsoft.com/en-us/store/b/software
• Adobe: http://www.adobe.com/products/special-offers.html?sdid=KKQYH&&mv=search&s_kwcid=AL!3085!3!232225482942!e!!g!!adobe%20software&ef_id=Wa-2WQAAAJ-VnYJC:20171219130503:s
• Apple: http://www.apple.com/shop/help/downloadable_software

 

The following entities offer paper goods, and retail services of such goods online:

 

• Neenah Paper: http://www.neenahpaper.com/shopneenah
• Paper Source: http://www.papersource.com/envelopes/
• French Paper Co.: http://www.frenchpaper.com/french-paper-lines

 

The following entities offer clothing and shoes, and provide retail services online:

 

• Everlane: http://www.everlane.com/collections/womens-all
• Masseys: http://www.masseys.com/womens/_/N-epmeuj
• Anthropologie: http://www.anthropologie.com/?ref=logo

 

The attached Internet evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Thus, the parties’ goods and services are related.

 

Accordingly, registration of the applied-for mark in International Classes 9, 16, 25 and 35 is refused under Section 2(d) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and/or services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

The identification for software in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  Therefore, although software may be classified in international classes other than International Class 9 (i.e., International Classes 41 and 42), any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

The word “clothing” and “clothing for babies” in the identification of goods in International Class 25 is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  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.  See TMEP §1904.02(c)(ii).

 

Examples of acceptable identifications for clothing and/or apparel in International Class 25 include the following:  “shirts,” “shorts,” “pants,” “coats,” “dresses,” “skirts,” and “socks.”  Applicant may also amend the identification by inserting the word “namely,” after “clothing” and “clothing for babies” and then listing the specific types of clothing items.  

The word “headgear” in the identification of goods must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  This word is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class. 

 

Although headgear may be classified in international classes other than International Class 25 (e.g., International Classes 9, 10, 26, and 28), any modification to the identification must identify goods in International Class 25 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

Applicant may (1) amend “headgear” to “headwear,” and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items in that class (e.g., headgear, namely, sports caps and hats, for International Class 25).

 

The activities identified as “retail services” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. 

 

If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 18 for “umbrellas” and in International Class 35 for “retail and wholesale services in relation to …umbrellas”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Finally, the identification of goods and services contains parentheses and brackets.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

 

Applicant may substitute the following, if accurate (additions are shown in bold, and deletions are shown as bolded strikethrough text):

 

International Class 9:

 

Computers; computer keyboards; rechargeable batteries; power banks being battery chargers for mobile phones; computer software and hardware; computer peripherals; mobile phones and related parts and accessories, namely, {list specific goods in International Class 9, e.g., cell phone backplates, cellphone covers, cell phone cases, carrying cases for cell phones, etc.}; headphones; sleeves for laptops; earbuds; calculators; lanyards specially adapted for cameras; lanyards specially adapted for mobile phones; lanyards for specially adapted for holding spectacles; eyeglass lanyards

 

International Class 16:

 

Paper and cardboard; printed matter, namely, {list specific type of printed matter, e.g., newspapers, photographs, magazines, books, printed periodicals, newsletters, brochures, etc.} in the field of {specify subject matter, e.g., securities, options and other financial instruments, etc.}; stationery; notebooks; notebook paper; {specify the type of books, e.g., travel, guide, copy, composition, etc.}books; calendars; clipboards; ink; pens; correction pens; cases for pens; pencils; stickers; decals; laptop decals; 3D decals for use on any surface; stickers being [stationery]; sticker books; desktop business card holders; brochures about {indicate subject matter} [NOTE: advertising brochures are not goods in trade]; printed brochures about {indicate subject matter}

 

            International Class 18:

 

Backpacks; bags, namely, {specify bags in International Class 18, e.g., travelling, weekend, gym, clutch bags, etc.}; leather bags; messenger bags; shoulder bags; tote bags; cross-body bags; satchels; luggage tags; umbrellas; wallets; card wallets; credit card cases being [wallets]; suitcases; umbrellas

 

International Class 21:

 

Household or  and kitchen utensils, namely, {list specific type of kitchen and household utensils, e.g., strainers, spatulas, wire baskets, graters, etc.} and ; household containers; beverage glassware; cups; coffee cups; mugs; drinking cups; glass drinking cup; bottles, sold empty; aluminium bottles, sold empty; wall plaques made of acrylic

 

International Class 25:

Clothing, namely, {list specific articles of clothing, e.g., shirts, tops, pants, jackets, etc.}; clothing for babies namely, {list specific articles of clothing, e.g., babies’ trousers, tops, pants, jackets, etc.}; footwear; headwear; caps being [headwear]; tops being clothing; pyjamas

 

            International Class 35:

 

Retail and wholesale store services featuring {state type of goods, e.g., software, clothing, footwear, etc.}; Incentive award programs to promote the sale of products and services of others, namely, marketing services provided in the nature of incentive programmes and schemes, privileges and loyalty recognition programmes, customer loyalty incentive programmes and schemes; organisation, operation and supervision of incentive schemes in the nature of an incentive awards program and information for issuing of tokens of value, benefits, incentive and other ancillary services related to such incentive awards program; market analysis relating to frequent use bonus incentive schemes; organisation and management of incentive award programmes and sales promotion programmes being (frequent buyer programmes); retail and wholesale store services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases being wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services online

           

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02. 

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

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

 

 

 

 

/Gidette Cuello/

Gidette Cuello

Trademark Examining Attorney

Law Office 125

(571) 272-1122

gidette.cuello@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.