United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79262780
Mark: JVC
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Correspondence Address: |
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Applicant: JVC KENWOOD CORPORATION
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1476647
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
COMPARISON OF THE MARKS
In the present case, applicant’s mark is JVC and registrant’s mark is JVC. The word portion of the marks are identical in appearance, sound, and meaning, “and 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). Additionally, because they are identical, 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 and/or services. Id.
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although 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)).
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS
Applicant’s goods are clothing, specifically: “Clothing; footwear; headwear; albs; ankle boots; aprons [clothing]; ascots; babies' pants [underwear]; bandanas [neckerchiefs]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks/bathing drawers; bathing suits/swimsuits; beach clothes; beach shoes; belts [clothing]; beret; bibs, not of paper; bibs, sleeved, not of paper; boas [necklets]; bodices [lingerie]; boot upper; boot; boots for sports; boxer shorts; brassieres; breeches for wear; camisoles; cap peaks; caps being headwear; chasubles; clothing; clothing for gymnastics; clothing of imitations of leather; clothing of leather; clothing containing slimming substances; coats; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs/wristbands [clothing]; cyclists' clothing; detachable collars; dress shields; dresses; dressing gowns; ear muffs [clothing]; embroidered clothing; esparto shoes or sandals; fingerless gloves; fishing vests; football shoes/football boots; footmuffs, not electrically heated; footwear; footwear uppers; fur stoles; furs [clothing]; gabardines [clothing]; galoshes/galoshes; garters; girdles; gloves [clothing]; gymnastic shoes; hairdressing capes; half-boots; hat frames [skeletons]; hats; headbands [clothing]; headwear; heel protectors for shoes; heelpieces for stockings; heelpieces for footwear; heels; hoods [clothing]; hosiery; jackets [clothing]; jerseys [clothing]; judo uniforms; jumper dresses/pinafore dresses; karate uniforms; kimonos; knickers/panties; knitwear [clothing]; lace boots; layettes [clothing]; leggings [leg warmers]/leg warmers; leggings [trousers]; leotards; liveries; maniples; mantillas; masquerade costumes; mitres [hats]/miters [hats]; mittens; money belts [clothing]; motorists' clothing; muffs [clothing]; neck scarves [mufflers]/neck scarfs [mufflers]/mufflers [neck scarves]; neckties; non-slipping devices for footwear; outerclothing; overalls/smocks; overcoats/topcoats; paper clothing; paper hats [clothing]; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; ponchos; pyjamas/pajamas; ready-made clothing; ready-made linings [parts of clothing]; sandals; saris; sarongs; sashes for wear; scarves/scarfs; shawls; shirt fronts; shirt yokes; shirts; shoes; short-sleeve shirts; shower caps; ski boots; ski gloves; skirts; skorts; skull caps; sleep masks; slippers; slips [underclothing]; sock suspenders; socks; inner soles; soles for footwear; spats/gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; studs for football boots; stuff jackets [clothing]; suits; suspenders/braces for clothing [suspenders]; sweat-absorbent stockings; sweat-absorbent underwear/sweat-absorbent underclothing; sweat-absorbent socks; sweaters/pullovers/jumpers [pullovers]; teddies [underclothing]/bodies [underclothing]; tee-shirt; tights; tips for footwear; togas; top hats; trouser straps/gaiter straps; trousers/pants (Am.); turbans; underpants; underwear/underclothing; uniforms; valenki [felted boots]; veils [clothing]; visors being headwear; waistcoats/vests; waterproof clothing; welts for footwear; wet suits for water-skiing; wimples; wooden shoes.”
Registrant’s goods are clothing, specifically: “Clothing, namely, T-shirts, shirts, athletic uniforms, undershirts, underpants, dresses, pajamas, trousers, skirts.”
As the case law and attached evidence shows, applicant’s and registrant’s goods are commercially related.
In total, the two marks create the same commercial impression and the evidence shows that the goods are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the goods originate from a common source. Therefore, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Lanham Act.
IDENTIFICATION OF GOODS
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).
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.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
For the reasons set forth below, the identification of goods needs clarification because it is, in part, indefinite. TMEP §1402.01. The portion of the identification that is unacceptable is in bold below with the explanation and/or suggestion in brackets. The remainder of the identification is acceptable. Suggested deletions are crossed out.
International Class 25:
Clothing [the specific type of clothing must be listed, the following is suggested: clothing, namely, {indicate types, e.g., t-shirts,
dresses, blouses, etc.}]; footwear; headwear; albs; ankle boots; aprons [clothing] [aprons]; ascots; babies' pants [underwear] [babies' pants]; bandanas [neckerchiefs] [bandanas]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks/bathing drawers [bathing trunks, bathing drawers];
bathing suits/swimsuits [bathing suits, swimsuits]; beach clothes [beachwear]; beach shoes; belts [clothing] [belts as clothing];
beret; bibs, not of paper; bibs, sleeved, not of paper; boas [necklets] [boas being necklets]; bodices [lingerie] [bodices being lingerie]; boot upper;
boot; boots for sports; boxer shorts; brassieres; breeches for wear; camisoles; cap peaks; caps being headwear; chasubles; clothing; clothing for
gymnastics [the specific types of these goods must be listed, the following is suggested: clothing for gymnastics, namely, {indicate type, e.g., shirts}]; clothing of imitations
of leather [clothing of imitations of leather, namely, {indicate specific types, e.g., pants}]; clothing of leather [clothing of leather, namely, {indicate specific types,
e.g., pants}]; clothing containing slimming substances [clothing containing slimming substances, namely, {indicate specific types, e.g., pants}]; coats; collars
[clothing] [collars as clothing]; combinations [clothing] [combinations being clothing articles]; corselets; corsets [underclothing] [corsets being
underclothing]; cuffs/wristbands [clothing] [cuffs, wristbands as clothing]; cyclists' clothing [cyclists' clothing, namely, {indicate specific type, e.g.,
jerseys}]; detachable collars; dress shields; dresses; dressing gowns; ear muffs [clothing] [ear muffs as clothing]; embroidered clothing [embroidered
clothing, namely, {indicate specific item, e.g., shirts, jackets, pants, etc.}]; esparto shoes or sandals [esparto shoes and sandals]; fingerless gloves; fishing vests;
football shoes/football boots [football shoes, football boots]; footmuffs, not electrically heated [the class 25 nature of these goods must be clarified,
e.g., footmuffs being clothing, not electrically heated]; footwear; footwear uppers; fur stoles; furs [clothing] [fur clothing, namely, {indicate
type, e.g., coats}]; gabardines [clothing] [gaberdines being clothing]; galoshes/galoshes [galoshes]; garters; girdles; gloves
[clothing] [gloves as clothing]; gymnastic shoes; hairdressing capes; half-boots; hat frames [skeletons] [hat frames]; hats; headbands [clothing]
[headbands for clothing]; headwear; heel protectors for shoes [the class 25 nature of these goods must be listed, e.g., fitted heel protectors for
shoes]; heelpieces for stockings; heelpieces for footwear; heels; hoods [clothing] [hoods as clothing]; hosiery; jackets [clothing] [jackets being clothing];
jerseys [clothing] [jerseys as clothing]; judo uniforms; jumper dresses/pinafore dresses [jumper dresses, pinafore dresses]; karate uniforms; kimonos;
knickers/panties [knickers, panties]; knitwear [clothing] [knitwear, namely, {indicate specific knitted clothing items, e.g., shirts, dresses, sweaters,
etc.}]; lace boots; layettes [clothing] [clothing layettes]; leggings [leg warmers]/leg warmers [leggings, leg warmers]; leggings
[trousers] [leggings as trousers]; leotards; liveries; maniples; mantillas; masquerade costumes; mitres [hats]/miters [hats] [miters being hats]; mittens; money belts [clothing] [money belts being clothing]; motorists' clothing [motorists' clothing, namely, {indicate specific knitted clothing items, e.g., shirts}];
muffs [clothing] [muffs as clothing]; neck scarves [mufflers]/neck scarfs [mufflers]/mufflers [neck scarves] [scarves being mufflers, neck scarfs being];
neckties; non-slipping devices for footwear [the specific types of these goods must be listed, the following is suggested: non-slipping soles for footwear]; outerclothing [the specific types of these goods must be listed, the following is suggested: outerclothing, namely, {indicate type, e.g., jackets}]; overalls/smocks
[overalls, smocks]; overcoats/topcoats [overcoats, topcoats]; paper clothing [paper clothing, namely, {indicate type of class 25 goods, e.g., paper hats,
paper aprons, etc.}]; paper hats [clothing] [paper hats for use as clothing items]; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; ponchos;
pyjamas/pajamas [pajamas]; ready-made clothing [ready-made clothing, namely, {indicate type, e.g., pants, dresses, etc.}]; ready-made
linings [parts of clothing] [ready-made linings being parts of clothing]; sandals; saris; sarongs; sashes for wear; scarves/scarfs [scarves]; shawls; shirt fronts; shirt
yokes; shirts; shoes; short-sleeve shirts; shower caps; ski boots; ski gloves; skirts; skorts; skull caps; sleep masks; slippers; slips [underclothing] [slips being
underclothing]; sock suspenders; socks; inner soles; soles for footwear; spats/gaiters [spats and gaiters]; sports jerseys; sports shoes; sports singlets; stocking suspenders;
stockings; studs for football boots; stuff jackets [clothing] [stuff jackets]; suits; suspenders/braces for clothing [suspenders] [suspenders being braces
for clothing]; sweat-absorbent stockings; sweat-absorbent underwear/sweat-absorbent underclothing [sweat-absorbent underwear and sweat-absorbent underclothing]; sweat-absorbent
socks; sweaters/pullovers/jumpers [pullovers] [sweaters, pullovers, and jumpers]; teddies [underclothing]/bodies [underclothing] [teddies and bodies both
being underclothing]; tee-shirt; tights; tips for footwear; togas; top hats; trouser straps/gaiter straps [trouser straps and gaiter straps]; trousers/pants
(Am.) [trousers and pants]; turbans; underpants; underwear/underclothing [underwear and underclothing]; uniforms; valenki [felted boots] [valenki being
felted boots]; veils [clothing] [veils as clothing]; visors being headwear; waistcoats/vests [waistcoats and vests]; waterproof
clothing [the specific types of these goods must be listed, the following is suggested: waterproof clothing, namely, {indicate specific type, e.g., pants, jackets, etc.}]; welts for footwear; wet
suits for water-skiing; wimples; wooden shoes.
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. For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
FOREIGN DOMICILED APPLICANT – ADVISORY
On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions. All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct.
These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register. See the U.S. Counsel Rule change webpage for more information.
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.
How to respond. Click to file a response to this nonfinal Office action
/Jonathan Falk/
Jonathan R. Falk
Trademark Examining Attorney
Law Office 111
(571)272-5301
Jonathan.falk@uspto.gov
RESPONSE GUIDANCE