Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 27, 2020

 

International Registration No. 1476647

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 5, 2020.

 

In a previous Office action(s) dated August 14, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Likelihood of Confusion Refusal

 

SECTION 2(d) 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. 4586500.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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

 

Applicant’s mark is JVC displayed in a stylized format.  Registrant’s mark is JVC and is also displayed in a stylized format.  Both marks contain the identical wording “JVC” with no other wording.  The two marks are virtually identical in sound, appearance and meaning.  The only difference between the two marks different stylization.  These similarities create the same commercial impression in the minds of consumers.

 

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 White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

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, consumers will focus on the wording of both marks and this wording is identical.

 

In sum, given the highly similar appearance and sound of the two marks, it follows that the marks create a highly similar commercial impression and therefore the marks are confusingly similar.

 

COMPARISON OF THE GOODS

 

Applicant’s goods are clothing, specifically: “Clothing, namely, pants, jeans, vests, anoraks, rainwear, wind resistant jackets, sweatshirts, tank tops, pullovers, knit shirts, cardigans, fleece pullovers; footwear; headwear; albs; ankle boots; aprons; ascots; babies' pants; bandanas; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks, bathing drawers; bathing suits, swimsuits; beachwear; beach shoes; belts as clothing; beret; bibs, not of paper; bibs, sleeved, not of paper; boas being necklets; bodices being lingerie; boot upper; boot; boots for sports; boxer shorts; brassieres; breeches for wear; camisoles; cap peaks; caps being headwear; chasubles; clothing for gymnastics, namely, sports jerseys, t-shirts, sweatshirts, tank tops and caps; clothing of imitations of leather, namely, shirts, pants, skirts, suits, jackets, coats, jumpers, hats and caps; clothing of leather, namely, shirts, pants, skirts, suits, jackets, coats, jumpers, hats and caps; clothing containing slimming substances, namely, shirts, t-shirts, pants, socks, tights, underwear, tank tops; coats; collars as clothing; combinations being clothing articles; corselets; corsets being underclothing; cuffs and wristbands as clothing; cyclists' clothing, namely, shirts, t-shirts, pants, jackets, socks, tights, gloves, vests, underwear, rainwear, wind resistant jackets and caps; detachable collars; dress shields; dresses; dressing gowns; ear muffs as clothing; embroidered clothing, namely, shirts, t-shirts, pants, jeans, jackets, coats, dresses, skirts, socks, tights, gloves, vests, underwear, anoraks, rainwear, wind resistant jackets, sweatshirts, tank tops, pullovers, sweaters, knit shirts, cardigans, parkas and fleece pullovers, hats and caps; esparto shoes and sandals; fingerless gloves; fishing vests; football shoes, football boots; footmuffs being clothing, not electrically heated; footwear uppers; fur clothing, namely, fur jackets, fur coats, fur muffs, fur hats, fur cloaks, fur stoles; gabardines being clothing; galoshes; garters; girdles; gloves as clothing; gymnastic shoes; hairdressing capes; half-boots; hat frames; hats; headbands for clothing; fitted heel protectors for shoes; heelpieces for stockings; heelpieces for footwear; heels; hoods as clothing; hosiery; jackets being clothing; jerseys as clothing; judo uniforms; jumper dresses, pinafore dresses; karate uniforms; kimonos; knickers, panties; knitwear clothing, namely, gloves, shirts, caps, skirts, dresses, tops, bottoms, jackets, face masks, underwear and baby shoes; lace boots; clothing layettes; leggings being leg warmers; leggings as trousers; leotards; liveries; maniples; mantillas; masquerade costumes; miters being hats; mittens; money belts being clothing; motorists' clothing, namely, shirts, t-shirts, pants, jeans, jackets, coats, socks, tights, gloves, vests, underwear, anoraks, rainwear, wind resistant jackets, sweatshirts, tank tops, pullovers, parkas, hats and caps; muffs as clothing; scarves being mufflers, neck scarves being mufflers; neckties; non-slipping soles for footwear; outerclothing, namely, jackets and coats; overalls, smocks; overcoats, topcoats; paper clothing, namely, aprons, hats, caps; paper hats for use as clothing items; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; ponchos; pajamas; ready-made clothing, namely, shirts, t-shirts, pants, jeans, jackets, coats, dresses, skirts, socks, tights, gloves, vests, underwear, anoraks, rainwear, wind resistant jackets, sweatshirts, tank tops, pullovers, sweaters, knit shirts, cardigans, parkas and fleece pullovers, hats and caps; ready-made linings being parts of clothing; sandals; saris; sarongs; sashes for wear; 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 being underclothing; sock suspenders; socks; inner soles; soles for footwear; spats and gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; studs for football boots; stuff jackets being clothing; suits; suspenders being braces for clothing; sweat-absorbent stockings; sweat-absorbent underwear and sweat-absorbent underclothing; sweat-absorbent socks; sweaters, pullovers, and jumpers; teddies and bodies both being underclothing; tee-shirt; tights; tips for footwear; togas; top hats; trouser straps and gaiter straps; trousers and pants; turbans; underpants; underwear and underclothing; uniforms; valenki being felted boots; veils as clothing; visors being headwear; waistcoats and vests; waterproof clothing, namely, jackets, coats, rainwear, shirts, pants, pullovers, parkas, ponchos; 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.

 

The compared goods and/or 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).

 

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers).

 

The previously attached evidence from Gap, Express, and Adidas, and the attached Internet evidence, consisting of screenshots from American Eagle, L.L. Bean, and Tommy Bahama, establishes that the same entity commonly manufactures applicant’s other types of clothing and registrant’s types of clothing and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods and/or 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).

 

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.

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

Applicant argues that there is no likelihood of confusion because the stylization of the marks make them neither identical nor similar.  However, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

For the foregoing reasons the refusal to register under Section 2(d) is continued and hereby made FINAL.

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Jonathan Falk/

Jonathan R. Falk

Trademark Examining Attorney

Law Office 111

(571)272-5301

Jonathan.falk@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 27, 2020 for

U.S. Trademark Application Serial No. 79262780

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jonathan Falk/

Jonathan R. Falk

Trademark Examining Attorney

Law Office 111

(571)272-5301

Jonathan.falk@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 27, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”