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. 79274474
Mark: AND WANDER
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Correspondence Address: |
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Applicant: and wander inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1504462
Notice of Provisional Full Refusal
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.
Discussion of provisional full refusal. 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).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Limited to: retail store services and wholesale store services featuring clothing; retail store services and wholesale store services featuring footwear; retail store services and wholesale store services featuring handkerchiefs; retail store services and wholesale store services featuring sports goods; retail store services and wholesale store services featuring hairbands; retail store services and wholesale store services featuring unfitted vanity cases; retail store services and wholesale store services featuring medical supplies; retail store services and wholesale store services featuring cosmetics, toiletries, dentifrices, soaps and detergents
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5261807 (SEA + WANDER) and 4497571 (VEER & WANDER), owned by different registrants. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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
The applied-for mark is “AND WANDER” with a design.
Registration no. 5261807 is “SEA + WANDER” with a design.
Registration no. 4497571 is “VEER & WANDER” in standard characters.
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the present the only wording “AND WANDER” in the applied-for mark has the same connotation and sound as the “+ WANDER” and “& WANDER” portions of the registered marks.
· http://www.ahdictionary.com/word/search.html?q=ampersand
· http://www.collinsdictionary.com/us/dictionary/english-thesaurus/plus
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)).
Based on the above, the marks are confusingly similar.
Comparison of the Services
Applicant identifies the following services in Class 035: Retail store services and wholesale store services featuring woven fabrics and bedding; retail store services and wholesale store services featuring clothing; retail store services and wholesale store services featuring footwear; retail store services and wholesale store services featuring bags; retail store services and wholesale store services featuring bags for campers; retail store services and wholesale store services featuring purses; retail store services and wholesale store services featuring personal articles in the name of jewelry; retail store services and wholesale store services featuring handkerchiefs; retail store services and wholesale store services featuring rings and jewelry; retail store services and wholesale store services featuring hairbands; retail store services and wholesale store services featuring unfitted vanity cases; retail store services and wholesale store services featuring umbrellas; retail store services and wholesale store services featuring food and beverages; retail store services and wholesale store services featuring two-wheeled motor vehicles; retail store services and wholesale store services featuring bicycles; retail store services and wholesale store services featuring furniture; retail store services or wholesale store services featuring camping furniture; retail store services and wholesale store services featuring joinery fittings; retail store services or wholesale store services for jewelry cases; retail store services and wholesale store services featuring tatami mats; retail store services and wholesale store services featuring electrical machinery and apparatus for personal use in the field of fashion and apparel; retail store services or wholesale store services for lighting apparatus; retail store services or wholesale store services for covers for smartphones; retail store services and wholesale store services featuring bladed and pointed hand tools, hand tools and metal hardware; retail store services and wholesale store services featuring kitchen equipment, cleaning tools and washing utensils; retail store services or wholesale store services featuring non-electric cooking heaters for household purposes; retail store services and wholesale store services featuring medical supplies; retail store services and wholesale store services featuring cosmetics, toiletries, dentifrices, soaps and detergents; retail store services and wholesale store services featuring agricultural machines, implements and supplies; retail store services and wholesale store services featuring flowers [natural] and trees; retail store services or wholesale store services featuring fuels; retail store services and wholesale store services featuring printed matter; retail store services and wholesale store services featuring paper and stationery; retail store services and wholesale store services featuring sports goods; retail store services or wholesale store services featuring tents for mountaineering or camping; retail store services and wholesale store services featuring toys, dolls, game machines and apparatus; retail store services and wholesale store services featuring musical instruments and records; retail store services and wholesale store services featuring photographic machines and apparatus and photographic supplies; retail store services and wholesale store services featuring clocks and watches; retail store services and wholesale store services featuring tobacco and smokers' articles; retail store services or wholesale store services featuring construction materials; retail store services and wholesale store services featuring semi-wrought precious stones and their imitations; retail store services and wholesale store services featuring candles and candlesticks; retail store services or wholesale store services featuring life saving apparatus and equipment; retail store services or wholesale store services featuring gas lanterns, lamp wicks, gas lamps, oil lamps and lamp chimneys; retail store services or wholesale store services featuring fishing tackle and fishing bait; retail store services or wholesale store services featuring butterfly nets.
Registration no. 5261807 (SEA + WANDER) identifies the following services in Class 035: Retail apparel stores.
Registration no. 4497571 (VEER & WANDER) identifies the following services in Class 035: Retail store services featuring skincare, hair care, fragrances, cosmetics, bath and body products.
In this case, the application and registration use broad wording to describe their respective services, which presumably encompasses all services of the type described, including more narrow services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
For example, registration no. 5261807 (SEA + WANDER)’s “Retail apparel stores” encompasses the following services of applicant: “retail store services and wholesale store services featuring clothing; retail store services and wholesale store services featuring footwear; retail store services and wholesale store services featuring handkerchiefs; retail store services and wholesale store services featuring sports goods.”
· http://www.bsnsports.com/apparel
Registration no. 4497571 (VEER & WANDER)’s “Retail store services featuring skincare, hair care, fragrances, cosmetics, bath and body products” encompasses and overlaps with applicant’s “retail store services and wholesale store services featuring hairbands; retail store services and wholesale store services featuring unfitted vanity cases; retail store services and wholesale store services featuring medical supplies; retail store services and wholesale store services featuring cosmetics, toiletries, dentifrices, soaps and detergents.”
Thus, applicant’s and registrants’ services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the 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)). Thus, applicant’s and registrants’ services are related.
Summary – Likelihood of Confusion
In light of the similarities between the marks and the relatedness of the services, it is likely that consumers who encounter the parties’ services will falsely conclude that they originate from the same source.
Based on the foregoing, registration is refused under Trademark Act Section 2(d) for the services identified as: “retail store services and wholesale store services featuring clothing; retail store services and wholesale store services featuring footwear; retail store services and wholesale store services featuring handkerchiefs; retail store services and wholesale store services featuring sports goods; retail store services and wholesale store services featuring hairbands; retail store services and wholesale store services featuring unfitted vanity cases; retail store services and wholesale store services featuring medical supplies; retail store services and wholesale store services featuring cosmetics, toiletries, dentifrices, soaps and detergents.”
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 requirements set forth below.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the services.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
IC 035: Retail store services and wholesale store services featuring woven fabrics and bedding; retail store services and wholesale store services featuring clothing; retail store services and wholesale store services featuring footwear; retail store services and wholesale store services featuring bags; retail store services and wholesale store services featuring bags for campers; retail store services and wholesale store services featuring purses; retail store services and wholesale store services featuring personal articles in the name of jewelry; retail store services and wholesale store services featuring handkerchiefs; retail store services and wholesale store services featuring rings and jewelry; retail store services and wholesale store services featuring hairbands; retail store services and wholesale store services featuring unfitted vanity cases; retail store services and wholesale store services featuring umbrellas; retail store services and wholesale store services featuring food and beverages; retail store services and wholesale store services featuring two-wheeled motor vehicles; retail store services and wholesale store services featuring bicycles; retail store services and wholesale store services featuring furniture; retail store services and wholesale store services featuring camping furniture; retail store services and wholesale store services featuring joinery fittings; retail store services and wholesale store services for jewelry cases; retail store services and wholesale store services featuring tatami mats; retail store services and wholesale store services featuring electrical machinery and apparatus for personal use in the field of fashion and apparel; retail store services and wholesale store services for lighting apparatus; retail store services and wholesale store services for covers for smartphones; retail store services and wholesale store services featuring bladed and pointed hand tools, hand tools and metal hardware; retail store services and wholesale store services featuring kitchen equipment, cleaning tools and washing utensils; retail store services and wholesale store services featuring non-electric cooking heaters for household purposes; retail store services and wholesale store services featuring medical supplies; retail store services and wholesale store services featuring cosmetics, toiletries, dentifrices, soaps and detergents; retail store services and wholesale store services featuring agricultural machines, implements and supplies; retail store services and wholesale store services featuring natural flowers and trees; retail store services and wholesale store services featuring fuels; retail store services and wholesale store services featuring printed matter; retail store services and wholesale store services featuring paper and stationery; retail store services and wholesale store services featuring sports goods; retail store services and wholesale store services featuring tents for mountaineering or camping; retail store services and wholesale store services featuring toys, dolls, game machines and apparatus; retail store services and wholesale store services featuring musical instruments and records; retail store services and wholesale store services featuring photographic machines and apparatus and photographic supplies; retail store services and wholesale store services featuring clocks and watches; retail store services and wholesale store services featuring tobacco and smokers' articles; retail store services and wholesale store services featuring construction materials; retail store services and wholesale store services featuring semi-wrought precious stones and their imitations; retail store services and wholesale store services featuring candles and candlesticks; retail store services and wholesale store services featuring life saving apparatus and equipment; retail store services and wholesale store services featuring gas lanterns, lamp wicks, gas lamps, oil lamps and lamp chimneys; retail store services and wholesale store services featuring fishing tackle and fishing bait; retail store services and wholesale store services featuring butterfly nets
Applicant’s goods and/or services may be clarified limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
Applicant should note the following additional requirements.
MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of a shaded triangle with the wording “AND WANDER” therein.
Applicant should note the following additional requirements.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. 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 or designate 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).
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.
How to respond. Click to file a response to this nonfinal Office action.
/Sarah E. Kunkleman/
Sarah E. Kunkleman
Trademark Examining Attorney
Law Office 105
571-272-6151
sarah.kunkleman@uspto.gov
RESPONSE GUIDANCE