| To: | LIVE FAST DIE YOUNG Clothing GmbH (pto@fkks.com) |
| Subject: | U.S. Trademark Application Serial No. 79298624 - LIVE FAST - N/A |
| Sent: | August 26, 2021 04:23:24 PM |
| Sent As: | ecom120@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
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. 79298624
Mark: LIVE FAST
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Correspondence Address: Frankfurt Kurnit Klein & Selz PC
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Applicant: LIVE FAST DIE YOUNG Clothing GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
International Registration No. 1561949
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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.”
This Office action is in response to applicant’s response to applicant’s communication filed on June 21, 2021.
In a previous Office action dated December 7, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:
In addition, applicant was required to satisfy the following requirements:
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:
See TMEP §§713.02, 714.04.
In addition, the following refusal has been withdrawn:
See TMEP §§713.02, 714.04.
After careful consideration of applicant’s evidence and arguments, the trademark examining attorney modifies and now makes FINAL the refusals and/or requirements 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:
PARTIAL REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION- AS TO CLASSES 25 AND 35 ONLY
ALL PRIOR ARGUMENTS AND EVIDENCE ARE MAINTAINED AND INCORPORATED HEREIN.
THIS PARTIAL REFUSAL APPLIES TO CLASSES 25 AND 35 ONLY.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4159524, “LIVE FAST”. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
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.
In this case, a likelihood of confusion is present because there are similarities between the compared marks and relatedness of the compared goods and/or services.
SIMILARITY OF THE MARKS
The applicant’s and registrant’s respective marks, “LIVE FAST” and “LIVE FAST”, are similar in appearance, sound, connotation, and commercial impression.
In the present case, applicant’s mark is “LIVE FAST” and registrant’s mark is “LIVE FAST”. The literal elements 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 the literal elements of the marks 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.
For the stated reasons, the marks are confusingly similar.
RELATEDNESS OF THE GOODS AND/OR SERVICES
The applicant’s relevant goods and/or services are listed below, as amended:
International Class 25 Arm warmers being clothing; clothing made of fur, namely, coats and pants; clothing layettes; babies' pants; bandana neckerchiefs; printed t-shirts; imitation leather clothing, namely, coats and pants; motorists' clothing, namely, jackets and pants; bridesmaids wear, namely, dresses; christening robes; clothing for wear in judo practices; clothing for children, namely, shirts and pants; motorcyclists' clothing of leather, namely, jackets and pants; articles of clothing, namely, coats, hats, jackets and pants; articles of clothing made from leather, namely, jackets and pants; paper clothing, namely, hats; clothing for martial arts, namely, martial arts suits; articles of clothing for horse-riding, other than riding hats, namely, coats and pants; sportswear clothing, namely, shirts and pants; clothing for fishermen, namely, coats and pants; boys' clothing, namely, shirts and pants; clothing for wear in wrestling games; maternity clothing, namely, dresses; wearable garments and clothing, namely, shirts; cap visors; visors being headwear; boas; chaps; topcoats; three piece suits; pocket squares; gloves; bow ties; money belts; knitwear, namely, knitwear, namely, knit shirts; knit jackets; golf pants, shirts and skirts; belts; clothing, namely, hand warmers; yashmaks in the nature of veils; shirts; shirts for suits; casual shirts; collared shirts; open-necked shirts; button down shirts; nighties; trousers; shorts; trousers of leather; trousers for babies; trousers for children; sweatpants; ski trousers; snowboard trousers; pantsuits; culotte skirts; trouser straps; suspenders; garters; suspender belts for men; jackets; jackets being sports clothing; fur jackets; fishing vests; sleeved jackets; sleeveless jackets; jackets and socks; snowboard jackets; weatherproof jackets; men's and women's jackets, coats, trousers, vests; jogging outfit sets; short sets; headwear; leather headwear; sports headwear, other than helmets, namely baseball caps; children's headwear; peaked headwear; corsets being underclothing; shoulder wraps; ties as clothing; yashmaghs headwear; short-sleeved or long-sleeved t-shirts; short trousers; short-sleeve shirts; cowls clothing; skull caps; warm-up suits; long jackets; long sleeve pullovers; leather belts; casual trousers; trouser leggings; light-reflecting jackets; cuffs; headwear being caps; cycling caps; cap peaks; cap peaks; cap peaks being headwear; nightwear; womens' outerwear clothing, namely, coats, jackets and pants; articles of outer clothing, namely, coats, jackets and pants; ear muffs; overalls; clothing in the nature of paper hats; paper hats for use as clothing items; fashion hats; fur cloaks; fur coats and jackets; polo knit tops; pullovers; slipovers; clothing in the nature of roll neck blouses; rugby tops; bush jackets; mufflers as neck scarves; sun visors being headwear; veils; veil headdresses; sweatbands; aprons; playsuits; quilted jackets; headbands; t-shirts; togas; tops being clothing; kerchiefs; outerclothing, namely, coats, jackets and pants; bottoms being clothing; warm-up jackets; wind resistant and waterproof jackets; weatherproof clothing, namely, coats, hats and pants; waterproof outerclothing, namely, coats, hats and pants; waterproof trousers; oilskins, namely, waterproof coats; chefs' whites, namely, chefs' coats; puttees; leg gaiters; windproof jackets; nappy pants; wind resistant jackets; wind stopper jackets; windbreaker jackets; hosiery; weather resistant outer clothing, namely, coats, jackets and pants; thermally insulated clothing, namely, socks; over-trousers
International Class 35 Retail store services in the field of clothing; retail discount store services in the field of clothing; pop-up retail store services featuring clothing accessories; online retail store services featuring headwear; wholesale retail store services in the field of clothing; wholesale retail store services featuring headwear; online retail store services in the field of clothing; online retail services featuring clothing; mail order catalog services featuring clothing; mail order catalog services featuring clothing accessories
The registrant’s relevant goods are listed below:
International Class 25 women's and men's clothing, namely, jackets, hats, belts, denim jeans, denim jackets, jeans, jean jackets, leather jackets, t-shirts, polo shirts, shirts, baby tees, tops, dresses, hooded sweatshirts, sweatshirts, thermal shirts, beanies, shorts, board shorts, long sleeve shirts, short sleeve shirts, leggings, caps
The applicant’s and registrant’s goods and/or services are related and could give rise to the mistaken belief that they emanate from the same source.
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re Country Oven, Inc., 2019 USPQ2d 443903, at *12 (TTAB 2019) (holding the use of identical marks for bread buns and retail bakery stores and shops likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion);TMEP §1207.01(a)(ii).
The previously attached Internet evidence consists of webpages from third-party clothing webpages. This evidence establishes that it is common for the same entity to offer the applicant and registrant’s goods and/or services. Moreover, the additional evidence attached herein corroborates this interpretation. Specifically, the attached evidence consisting of third- party clothing webpages, establishes that the same entity commonly provides the relevant clothing and retail services and markets the goods and/or services under the same mark. See the attached internet evidence:
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 the applicant’s response to the Office action dated June 21, 2021, applicant argued against the refusal in that there is no likelihood of confusion where: 1) consumers of Class 25 goods are accustomed to distinguishing between LIVE and FAST marks; 2) several of applicant’s products and the cited goods are distinct and unrelated; 3) several of applicant’s products in Class 25 are not similar or related to the cited goods; and 4) most of applicant’s products are not similar or related to the cited goods. Applicant’s argument are not persuasive and are addressed in relation to the marks and goods and/or services.
The similarity of applicant’s and registrant’s marks does not turn on third-party use of the words LIVE” and/or “FAST” but the fact that both applicant and registrant use the same word phrasing “LIVE FAST”. Applicant’s and registrant’s marks contain and/or are limited to identical literal elements and, as a result, 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). The stylization of applicant’s mark does not obviate the noted similarities where registrant’s standard character mark could be stylized identically to applicant’s mark to create the same overall commercial impression. 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 word portion 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”).
Further, the goods and/or services of applicant and registrant are related and they 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). The goods and/or services of the parties 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.” See 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). Further, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). The evidence of record demonstrates that the same entity commonly provides the goods and/or services of the parties and such supports a finding that applicant’s and registrant’s clothing goods and/or retail services emanate from the same source, especially where the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines due to the virtually identical nature of the respective marks.
Applicant’s reasoned that its clothing manufacturing products, which consists of its Class 24 products for use in the manufacturing of clothing, Class 26 products that are generally incorporated into clothing in the manufacturing process, Class 35 wholesale services that are related to clothing and headgear, and its Class 42 services for creating textile and fashion designs, are not related to the cited goods, there are no third-party registrations showing that the same mark is typically registered for the cited goods and clothing manufacturing products, and the evidence of record is insufficient to demonstrates that such goods and/or services emanate from a single source. However, the evidence of record clearly provides that the same entity commonly provides a wide range of clothing goods and retail store services and such supports a finding that applicant’s Class 25 and 35 goods and/or services, as amended, and registrant’s Class 25 goods commonly emanate from a single source.
Upon encountering “LIVE FAST” used on applicant’s goods and/or services and “LIVE FAST” used on registrant’s goods, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source. Because the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Therefore, applicant’s mark is not entitled to registration under Section 2(d) of Trademark Act.
IDENTIFICATION OF GOODS AND/OR SERVICES
In the communication dated June 21, 2021, applicant amended the identification of goods and/or services as follows:
International Class 14 Lapel Pins [jewellery]; pins being jewellery
International Class 16 Printed packaging materials of paper; cartons of cardboard for packaging; containers of paper for packaging purposes; printed patterns for making clothing; bags made of paper for packaging; bags made of paper for packaging purposes; printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of clothing; printed material in the nature of color samples; labels of paper; labels made of paper; bar code labels, not of textiles; paper flags; paper bunting; printed labels of paper; printed paper labels; printed paper signs; paper badges; paper stickers; paper banners; writing pads of paper; paper tapes; paper gift wrap bows; flags of paper; paper boxes; paper shopping bags; posters made of paper; signboards of cardboard and paper; printed patterns for making clothes; typeface; paper and plastic bags for packaging, namely, pouches; envelopes; wrapping materials made of paper; advertising signs of paper; signboards of paper or cardboard; printed advertisement boards of paper
International Class 24 Banners of textile; cotton fabrics; fabrics made from cotton, other than for insulation; printed textile piece goods, namely, labels; elastic fabrics for clothing; textiles labels; synthetic fibre fabrics for use in the manufacture of articles of clothing; fabric linings for clothing; fabric linings for headgear; textile fabrics for the manufacture of clothing; woven fabrics for use in the manufacture of articles of clothing; jersey fabrics for shirts; calico; jersey fabric; textile adhesive labels; laminated fabrics for textile use; fabrics for use as linings in clothing; materials for use in making clothes, namely, vinyl and cloth textiles; tags of textile for attachment to clothing; textile fabric piece goods for use in the manufacture of clothing; textile fabric piece goods for use in the manufacturing of clothing; textile fabric piece goods for use in the manufacture of articles of clothing; textile fabric piece goods for use in the manufacturing of articles of clothing; labels of textile for identifying clothing; labels of textile for identifying articles of clothing; textile labels for marking clothing; polyester fabrics; elastic apparel fabrics; textile fabrics for use in the manufacture of wallets; textile fabrics for use in the manufacturing of women's outerwear; textile fabric for use in the manufacture of purses; textile fabric for manufacturing men's outerwear; textile fabrics for use in the manufacture of sportswear apparel; waterproof fabrics for use in the manufacture of trousers; waterproof fabrics for use in the manufacture of jackets; textile fabrics for manufacturing clothing; woollen fabrics for use in the manufacture of jackets; woollen fabrics for use in the manufacturing of jackets; woollen fabrics for use in the manufacture of trousers
International Class 25 Arm warmers being clothing; clothing made of fur, namely, coats and pants; clothing layettes; babies' pants; bandana neckerchiefs; printed t-shirts; imitation leather clothing, namely, coats and pants; motorists' clothing, namely, jackets and pants; bridesmaids wear, namely, dresses; christening robes; clothing for wear in judo practices; clothing for children, namely, shirts and pants; motorcyclists' clothing of leather, namely, jackets and pants; articles of clothing, namely, coats, hats, jackets and pants; articles of clothing made from leather, namely, jackets and pants; paper clothing, namely, hats; clothing for martial arts, namely, martial arts suits; articles of clothing for horse-riding, other than riding hats, namely, coats and pants; sportswear clothing, namely, shirts and pants; clothing for fishermen, namely, coats and pants; boys' clothing, namely, shirts and pants; clothing for wear in wrestling games; maternity clothing, namely, dresses; wearable garments and clothing, namely, shirts; cap visors; visors being headwear; boas; chaps; topcoats; three piece suits; pocket squares; gloves; bow ties; money belts; knitwear, namely, knitwear, namely, knit shirts; knit jackets; golf pants, shirts and skirts; belts; clothing, namely, hand warmers; yashmaks in the nature of veils; shirts; shirts for suits; casual shirts; collared shirts; open-necked shirts; button down shirts; nighties; trousers; shorts; trousers of leather; trousers for babies; trousers for children; sweatpants; ski trousers; snowboard trousers; pantsuits; culotte skirts; trouser straps; suspenders; garters; suspender belts for men; jackets; jackets being sports clothing; fur jackets; fishing vests; sleeved jackets; sleeveless jackets; jackets and socks; snowboard jackets; weatherproof jackets; men's and women's jackets, coats, trousers, vests; jogging outfit sets; short sets; headwear; leather headwear; sports headwear, other than helmets, namely baseball caps; children's headwear; peaked headwear; corsets being underclothing; shoulder wraps; ties as clothing; yashmaghs headwear; short-sleeved or long-sleeved t-shirts; short trousers; short-sleeve shirts; cowls clothing; skull caps; warm-up suits; long jackets; long sleeve pullovers; leather belts; casual trousers; trouser leggings; light-reflecting jackets; cuffs; headwear being caps; cycling caps; cap peaks; cap peaks; cap peaks being headwear; nightwear; womens' outerwear clothing, namely, coats, jackets and pants; articles of outer clothing, namely, coats, jackets and pants; ear muffs; overalls; clothing in the nature of paper hats; paper hats for use as clothing items; fashion hats; fur cloaks; fur coats and jackets; polo knit tops; pullovers; slipovers; clothing in the nature of roll neck blouses; rugby tops; bush jackets; mufflers as neck scarves; sun visors being headwear; veils; veil headdresses; sweatbands; aprons; playsuits; quilted jackets; headbands; t-shirts; togas; tops being clothing; kerchiefs; outerclothing, namely, coats, jackets and pants; bottoms being clothing; warm-up jackets; wind resistant and waterproof jackets; weatherproof clothing, namely, coats, hats and pants; waterproof outerclothing, namely, coats, hats and pants; waterproof trousers; oilskins, namely, waterproof coats; chefs' whites, namely, chefs' coats; puttees; leg gaiters; windproof jackets; nappy pants; wind resistant jackets; wind stopper jackets; windbreaker jackets; hosiery; weather resistant outer clothing, namely, coats, jackets and pants; thermally insulated clothing, namely, socks; over-trousers
International Class 26 Dressmakers' articles, namely, accessories for apparel in the nature of charms for attachment to zipper pulls and buttons, sewing articles in the nature of sewing kits, and decorative textile articles in the nature of haberdashery ribbons and braids; artificial blossoms for attachment to clothing; ornamental cloth patches for clothing; cloth patches for use in the repair of clothing; fastenings for suspenders; non-metallic eyelets for clothing; borders and edgings for clothing; borders for hemming clothing; snap buttons for clothing; elastic shoe fasteners in the nature of elastic strips incorporating grips for securing trousers to riding boots; elastic shoe fasteners in the nature of elastic strips incorporating clips for securing trousers to riding boots; embroidered patches for clothing; belt buckles of precious metal; trouser clips for cyclists; clothing buckles; clips for trousers for cyclists; fastenings for clothing, namely, snap buttons; buttons for clothing; buttons for articles of clothing; trimmings for clothing; clothing trimmings; eyelets of metal for clothing; novelty buttons for wear; seam bindings for hemming clothing; fabric appliques for identifying clothing; fabric appliques for marking clothing; buckle accessories for clothing; ornamental cloth patches; buckles clothing accessories of precious metal; decorative cord for clothing; shoulder pads for clothing; embroidery for garments; reinforcing tapes for clothing, namely, double-stick tape for affixing clothing to the body; eyelets for clothing
International Class 35 Retail store services in the field of clothing; retail discount store services in the field of clothing; pop-up retail store services featuring clothing accessories; online retail store services featuring headwear; wholesale retail store services in the field of clothing; wholesale retail store services featuring headwear; online retail store services in the field of clothing; online retail services featuring clothing; mail order catalog services featuring clothing; mail order catalog services featuring clothing accessories
International Class 39 Storage of clothes; storage of clothing; storage of articles of clothing; transportation of clothing
International Class 40 Monogramming of clothes; custom tailoring; dressmaking; custom tailoring services; sewing services, namely, application of appliques to textiles; sewing services, namely, application of motifs to textiles; custom imprinting of t-shirts; fabric bleaching; custom imprinting, namely, photographic etching of articles of clothing; dyeing of clothing; dyeing of cloth or clothing; hot permanent pressing treatment of clothing; waterproofing of clothing; permanent press treatment of items of clothing; permanent press treatment of clothing; permanent press treatment of articles of clothing; permanent press treatment of fabrics; pre-shrinking of clothing; pre-shrinking of articles of clothing; shrinking of items of clothing; custom imprinting of clothing with decorative designs; laminating of textiles, namely, fiber-based substrates used in manufacture of cartons for consumer products; sewing; needlework and dressmaking; pre-shrinking of items of clothing; cloth cutting; custom clothing alteration; custom alteration of clothing
International Class 42 Textile design services; fashion design; textile design for others in the field of clothing; visual design of printed material, namely, visual elements for on-line, broadcast, print, outdoor and other communication media; visual design of printed matter, namely, visual elements for on-line, broadcast, print, outdoor and other communication media; fashion design for clothing; fashion design for articles of clothing; graphic designs of logos for t-shirts
Applicant must clarify the below listed wording in the identification of goods and/or services because the respective identifications are indefinite and/or too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The identification of goods and/or services contains brackets. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification. See TMEP §§1402.04, 1402.12. The only exception for including parenthetical information in identifications is 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).” See TMEP §1402.12.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
International Class 14:
In this case, the U.S. application identifies the goods in the Class 14 as follows: “Bonnet pins not of precious metal; bonnet pins of precious metal”
However, the proposed amendment identifies the following goods in the Class 14: “Lapel Pins [jewellery]; pins being jewellery”
The proposed amendment is beyond the scope of the original identification because it identifies goods that are of a different nature than those listed in the initial application. Specifically, the wordings “Bonnet pins not of precious metal; bonnet pins of precious metal” do not describe any goods in Class 14 where such wordings properly appear in Class 26. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording where the wordings do not appear to describe any goods in that Class 14. See TMEP §1904.02(c)(iii).
Applicant may respond by amending this wording to clarify the nature of the goods; however, any amendment to the identification must identify goods in International Class 14 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 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). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may respond by deleting the proposed amendment to the goods and/or arguing that the amendment is within the scope of the goods in the initial application and should remain in the application. See 37 C.F.R. §2.71(a); TMEP §§1402.07(a), (e), 1904.02(c)(iv). If this issue is being made final, applicant may appeal to the Trademark Trial and Appeal Board under 37 C.F.R. §§2.141, 2.142, or petition the Director under 37 C.F.R. §2.146 if permitted by 37 C.F.R. §2.63(b)(2). TMEP §1904.02(c)(iv). Additionally, applicant may merely delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).
International Class 24:
The wording “headgear” is indefinite and must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Amendment:
Applicant may substitute the following wording, if accurate (additions in bold):
International Class 16 Printed packaging materials of paper; cartons of cardboard for packaging; containers of paper for packaging purposes; printed patterns for making clothing; bags made of paper for packaging; bags made of paper for packaging purposes; printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of clothing; printed material in the nature of color samples; labels of paper; labels made of paper; bar code labels, not of textiles; paper flags; paper bunting; printed labels of paper; printed paper labels; printed paper signs; paper badges; paper stickers; paper banners; writing pads of paper; paper tapes; paper gift wrap bows; flags of paper; paper boxes; paper shopping bags; posters made of paper; signboards of cardboard and paper; printed patterns for making clothes; typeface; paper and plastic bags for packaging, namely, pouches; envelopes; wrapping materials made of paper; advertising signs of paper; signboards of paper or cardboard; printed advertisement boards of paper
International Class 24 Banners of textile; cotton fabrics; fabrics made from cotton, other than for insulation; printed textile piece goods, namely, labels; elastic fabrics for clothing; textiles labels; synthetic fibre fabrics for use in the manufacture of articles of clothing; fabric linings for clothing; fabric linings for headwear, namely, {specify type, e.g., hats, caps, etc.}; textile fabrics for the manufacture of clothing; woven fabrics for use in the manufacture of articles of clothing; jersey fabrics for shirts; calico; jersey fabric; textile adhesive labels; laminated fabrics for textile use; fabrics for use as linings in clothing; materials for use in making clothes, namely, vinyl and cloth textiles; tags of textile for attachment to clothing; textile fabric piece goods for use in the manufacture of clothing; textile fabric piece goods for use in the manufacturing of clothing; textile fabric piece goods for use in the manufacture of articles of clothing; textile fabric piece goods for use in the manufacturing of articles of clothing; labels of textile for identifying clothing; labels of textile for identifying articles of clothing; textile labels for marking clothing; polyester fabrics; elastic apparel fabrics; textile fabrics for use in the manufacture of wallets; textile fabrics for use in the manufacturing of women's outerwear; textile fabric for use in the manufacture of purses; textile fabric for manufacturing men's outerwear; textile fabrics for use in the manufacture of sportswear apparel; waterproof fabrics for use in the manufacture of trousers; waterproof fabrics for use in the manufacture of jackets; textile fabrics for manufacturing clothing; woollen fabrics for use in the manufacture of jackets; woollen fabrics for use in the manufacturing of jackets; woollen fabrics for use in the manufacture of trousers
International Class 25 Arm warmers being clothing; clothing made of fur, namely, coats and pants; clothing layettes; babies' pants; bandana neckerchiefs; printed t-shirts; imitation leather clothing, namely, coats and pants; motorists' clothing, namely, jackets and pants; bridesmaids wear, namely, dresses; christening robes; clothing for wear in judo practices; clothing for children, namely, shirts and pants; motorcyclists' clothing of leather, namely, jackets and pants; articles of clothing, namely, coats, hats, jackets and pants; articles of clothing made from leather, namely, jackets and pants; paper clothing, namely, hats; clothing for martial arts, namely, martial arts suits; articles of clothing for horse-riding, other than riding hats, namely, coats and pants; sportswear clothing, namely, shirts and pants; clothing for fishermen, namely, coats and pants; boys' clothing, namely, shirts and pants; clothing for wear in wrestling games; maternity clothing, namely, dresses; wearable garments and clothing, namely, shirts; cap visors; visors being headwear; boas; chaps; topcoats; three piece suits; pocket squares; gloves; bow ties; money belts; knitwear, namely, knitwear, namely, knit shirts; knit jackets; golf pants, shirts and skirts; belts; clothing, namely, hand warmers; yashmaks in the nature of veils; shirts; shirts for suits; casual shirts; collared shirts; open-necked shirts; button down shirts; nighties; trousers; shorts; trousers of leather; trousers for babies; trousers for children; sweatpants; ski trousers; snowboard trousers; pantsuits; culotte skirts; trouser straps; suspenders; garters; suspender belts for men; jackets; jackets being sports clothing; fur jackets; fishing vests; sleeved jackets; sleeveless jackets; jackets and socks; snowboard jackets; weatherproof jackets; men's and women's jackets, coats, trousers, vests; jogging outfit sets; short sets; headwear; leather headwear; sports headwear, other than helmets, namely baseball caps; children's headwear; peaked headwear; corsets being underclothing; shoulder wraps; ties as clothing; yashmaghs headwear; short-sleeved or long-sleeved t-shirts; short trousers; short-sleeve shirts; cowls clothing; skull caps; warm-up suits; long jackets; long sleeve pullovers; leather belts; casual trousers; trouser leggings; light-reflecting jackets; cuffs; headwear being caps; cycling caps; cap peaks; cap peaks; cap peaks being headwear; nightwear; womens' outerwear clothing, namely, coats, jackets and pants; articles of outer clothing, namely, coats, jackets and pants; ear muffs; overalls; clothing in the nature of paper hats; paper hats for use as clothing items; fashion hats; fur cloaks; fur coats and jackets; polo knit tops; pullovers; slipovers; clothing in the nature of roll neck blouses; rugby tops; bush jackets; mufflers as neck scarves; sun visors being headwear; veils; veil headdresses; sweatbands; aprons; playsuits; quilted jackets; headbands; t-shirts; togas; tops being clothing; kerchiefs; outerclothing, namely, coats, jackets and pants; bottoms being clothing; warm-up jackets; wind resistant and waterproof jackets; weatherproof clothing, namely, coats, hats and pants; waterproof outerclothing, namely, coats, hats and pants; waterproof trousers; oilskins, namely, waterproof coats; chefs' whites, namely, chefs' coats; puttees; leg gaiters; windproof jackets; nappy pants; wind resistant jackets; wind stopper jackets; windbreaker jackets; hosiery; weather resistant outer clothing, namely, coats, jackets and pants; thermally insulated clothing, namely, socks; over-trousers
International Class 26 Dressmakers' articles, namely, accessories for apparel in the nature of charms for attachment to zipper pulls and buttons, sewing articles in the nature of sewing kits, and decorative textile articles in the nature of haberdashery ribbons and braids; artificial blossoms for attachment to clothing; ornamental cloth patches for clothing; cloth patches for use in the repair of clothing; fastenings for suspenders; non-metallic eyelets for clothing; borders and edgings for clothing; borders for hemming clothing; snap buttons for clothing; elastic shoe fasteners in the nature of elastic strips incorporating grips for securing trousers to riding boots; elastic shoe fasteners in the nature of elastic strips incorporating clips for securing trousers to riding boots; embroidered patches for clothing; belt buckles of precious metal; trouser clips for cyclists; clothing buckles; clips for trousers for cyclists; fastenings for clothing, namely, snap buttons; buttons for clothing; buttons for articles of clothing; trimmings for clothing; clothing trimmings; eyelets of metal for clothing; novelty buttons for wear; seam bindings for hemming clothing; fabric appliques for identifying clothing; fabric appliques for marking clothing; buckle accessories for clothing; ornamental cloth patches; buckles clothing accessories of precious metal; decorative cord for clothing; shoulder pads for clothing; embroidery for garments; reinforcing tapes for clothing, namely, double-stick tape for affixing clothing to the body; eyelets for clothing
International Class 35 Retail store services in the field of clothing; retail discount store services in the field of clothing; pop-up retail store services featuring clothing accessories; online retail store services featuring headwear; wholesale retail store services in the field of clothing; wholesale retail store services featuring headwear; online retail store services in the field of clothing; online retail services featuring clothing; mail order catalog services featuring clothing; mail order catalog services featuring clothing accessories
International Class 39 Storage of clothes; storage of clothing; storage of articles of clothing; transportation of clothing
International Class 40 Monogramming of clothes; custom tailoring; dressmaking; custom tailoring services; sewing services, namely, application of appliques to textiles; sewing services, namely, application of motifs to textiles; custom imprinting of t-shirts; fabric bleaching; custom imprinting, namely, photographic etching of articles of clothing; dyeing of clothing; dyeing of cloth or clothing; hot permanent pressing treatment of clothing; waterproofing of clothing; permanent press treatment of items of clothing; permanent press treatment of clothing; permanent press treatment of articles of clothing; permanent press treatment of fabrics; pre-shrinking of clothing; pre-shrinking of articles of clothing; shrinking of items of clothing; custom imprinting of clothing with decorative designs; laminating of textiles, namely, fiber-based substrates used in manufacture of cartons for consumer products; sewing; needlework and dressmaking; pre-shrinking of items of clothing; cloth cutting; custom clothing alteration; custom alteration of clothing
International Class 42 Textile design services; fashion design; textile design for others in the field of clothing; visual design of printed material, namely, visual elements for on-line, broadcast, print, outdoor and other communication media; visual design of printed matter, namely, visual elements for on-line, broadcast, print, outdoor and other communication media; fashion design for clothing; fashion design for articles of clothing; graphic designs of logos for t-shirts
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.
PROPER RESPONSE TO FINAL OFFICE ACTION
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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).
/Shari Gadson/
Trademark Examining Attorney
Law Office 120
United States Patent and Trademark Office
571-272-9319
shari.gadson@uspto.gov
RESPONSE GUIDANCE
