Offc Action Outgoing

This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).

Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

SUMMARY OF ISSUES:

Partial Section 2(d) Refusal – Likelihood of Confusion
Representation by U.S.-Licensed Attorney Required
Identification of Goods

PARTIAL 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. 4125323. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration. This refusal applies to International Class 25 only.

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 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). Only those factors that are “relevant and of record” need be considered. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

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. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747; 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); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018); TMEP §1207.01(b).

In this case, the following marks must be compared:

Application: MOIA, in standard characters

Registration: MOYABRAND, in stylized characters with a design

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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018); TMEP §1207.01(b)(viii), (c)(ii). For marks containing both words and design elements, 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. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); TMEP §1207.01(c)(ii). Additionally, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

Greater weight is often given to dominant features when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050. This is because “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); TMEP §1207.01(b). The analysis is based on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018); TMEP §1207.01(b).

In this case, the wording MOYABRAND dominates in creating the commercial impression of the registered mark because it is the part of the mark that will be used in requesting or referring to the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d at 1184; TMEP §1207.01(c)(ii). Similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv). Comparing this matter to the applied-for mark, the marks sound the same apart from applicant’s deletion of the wording BRAND. See The American Heritage Dictionary, Pistoia, hoya. The addition of wording BRAND in the registered mark is insufficient to prevent a likelihood of confusion because it lacks source-indicating significance. In re Wilson, 57 USPQ 2d. 1863, 1865 (TTAB 2001).

Similarity of the Goods

The goods must be are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); TMEP §§1207.01, 1207.01(a)(vi). Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). The compared goods 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); 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., 668 F.3d at 1369, 101 USPQ2d at 1722; TMEP §1207.01(a)(i).

In this case, the relatedness of the following relevant goods must be considered:

Application: T-shirts, polo shirts, jackets, caps, in this class

Registration: Martial Arts uniforms; martial arts belts; t-shirts, sweatpants, shorts, pants, and shirts

Identifications are interpreted according to the ordinary meaning of the terms used to describe the goods and are presumed to encompass all the goods of the type described. See In re Solid State Design, Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); In re Thor Tech, Inc., 85 USPQ2d 1474, 1477 (TTAB 2007); TMEP §§1207.01(a)(iii), 1402.07(a).

Here, the identification for “shirts” in the registration is broad enough to encompass the identification for “T-shirts, polo shirts” in the application. Therefore, the parties’ goods are related.

Conclusion

Considering the similarity of the applied-for mark and the registered mark together with the relatedness of the parties’ goods, registration of the applied-for mark is refused under Trademark Act Section 2(d) due to a likelihood of confusion with the mark in U.S. Trademark Registration No. 4125323.

This refusal applies to International Class 25 only.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

REPRESENTATION BY U.S.-LICENSED ATTORNEY REQUIRED

An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.

To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).

IDENTIFICATION OF GOODS

Applicant must delete the wording “included in this class” because an identification must set forth the common name of a good or service using terminology that is generally understood. TMEP §1402.01. This wording is not acceptable because it is not the common name of particular goods or services and would not be understood by those unfamiliar with the Nice Classification.

The identification for “parts and fittings” must be clarified because it is indefinite and does not make clear what the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. While the word “parts” is generally unacceptable, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a).

The identification of goods contains parentheses. Generally, applicants should not use parentheses or 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. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

Applicant must amend the identification of goods because it includes entries that are indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). The application must identify the goods specifically to provide public notice and to enable the USPTO to classify the goods properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). TMEP §1402.01. The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark. Id.; In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

Here, the wording “skins” must be amended because it includes goods like “animal skins” in Class 18 and “potato skins” in Class 29. The wording “caps” includes goods like “surgical caps” in Class 10 and caps in the nature of headwear in Class 25.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, where wording may be classified in several international classes, any modification must identify goods in the same International Class originally specified in the application for the relevant wording. See TMEP §1904.02(c), (c)(ii).

Applicant may adopt the following amended wording if accurate (changes in bold):

Class 016: Calendars, stationery, pens

Class 018: Umbrellas and parasols; walking sticks; trunks in the nature of luggage; luggage; bags, in particular sports bags and briefcases; wallets, purses; key cases; goods made from leather and imitations of leather, namely, umbrellas and parasols, trunks in the nature luggage, luggage, bags being sports bags and briefcases, wallets, purses, key cases, handbags, travelling bags, rucksacks; leather, unworked or semi-worked; handbags; travelling bags; rucksacks; imitation leather; animal skins and fur; animal skins; saddlery, whips and animal apparel; replacement parts and for all aforesaid goods

Class 025: T-shirts, polo shirts, jackets; caps being headwear

Class 028: Scale model vehicles, namely, scale model cars

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, 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.

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. As noted above, applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. 37 C.F.R. §§2.11(a), 11.14

How to respond. Click to file a response to this nonfinal Office action

QUESTIONS:

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

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

· /John LaMont/

· Examining Attorney

· Law Office 123

· (571) 270-0404

· john.lamont@uspto.gov

Offc Action Outgoing

MOIA

Volkswagen Aktiengesellschaft

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