Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

International Registration No. 1561949

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

In the communication dated February 28, 2022, applicant submitted arguments and evidence against the Trademark Act Section 2(d) refusal in that 1) Confusion is unlikely because consumers are accustomed to distinguishing among the various marks using “LIVE” and “FAST” together in the marketplace; 2) There are significant differences between the applicant’s and registrant’s products; 3) Confusion is unlikely given that applicant and registrant have co-existed on the USPTO register since 2016; and 4) Applicant and registrant target fundamentally different consumers.

 

The trademark examining attorney does not find applicant’s arguments persuasive and addresses such in relation to the mark and the goods and/or services.

 

Applicant cites its prior registration for U.S. Reg. No. 5015159- “LIVE FAST DIE YOUNG”, which it asserts to have the same Class 25 and 35 goods and services that are identified in the instant application, as evidence that its prior mark and registrant’s mark have co-existed on the USPTO register for several years and registrant cannot be harmed by the issuance of a second registration for essentially the same mark for the same goods and services. Applicant argued that because the first two words of its prior registration and registrant’s mark are identical, and those marks co-existed, applicant is entitled to equal treatment for the instant application. However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.

 

In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.  Specifically, applicant’s prior registration is not the same nor is it “essentially the same” as the applied-for mark. The applied-for mark “LIVE FAST” has a different commercial impression from applicant’s prior registered mark for “LIVE FAST DIE YOUNG” , which co-existed with registrant’s mark for “LIVE FAST”, because the prior registration is a unitary phrase that connotes one is to live for today, take lots of risks, have lots of fun, get the most out of life before dying, and not suffer through old age. See the attached internet evidence from http://www.cyberdefinitions.com/, http://www.urbandictionary.com/, http://urbanthesaurus.org/, http://songmeanings.com/, http://www.azlyrics.com/, and http://en.wikipedia.org/. Conversely, “LIVE FAST”, as demonstrated by the applied-for mark and registrant’s mark, merely connotes that one is to pass through or spend the duration of life ahead of a correct time or schedule and such has no relation to dying or old age. See the attached internet evidence from http://www.merriam-webster.com/.

 

The variation in applicant’s proposed mark is significant where applicant now changes the overall commercial impression from its prior registration and identifies wording that is identical to the entirety (emphasis added) of registrant’s mark. Because they contain identical wording, applicant’s applied-for mark and registrant’s mark 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. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

 

Thus, applicant has not demonstrated that the applied-for mark has co-existed with registrant’s mark for several years to obviate confusion or that the registrant cannot be harmed by the issuance of a second registration for essentially the same mark, particularly where applicant is not applying for essentially the same mark that it holds a registration for, but a mark that is identical in appearance, sound, connotation, and overall commercial impression to registrant’s mark. The applied-for mark and registrants mark 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. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). Thus, applicant’s prior registration does not obviate the Section 2(d) refusal.

 

Additionally, applicant argues that its consumers and those of the registrant differ where applicant’s mark is used in connection with a streetwear brand, registrant has a general clothing brand, not a niche streetwear line, and, as a result, the differences in the parties’ products are sufficient to avoid a likelihood of confusion where they target fundamentally different consumers. However, neither the application nor the registration contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

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); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); 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); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men). The previously attached evidence of record, which is maintained an incorporated herein, demonstrates that the same entity commonly provides the identified clothing goods and/or retail store services of the parties and, as a result, applicant’s and registrant’s good and/or services are related and/or marketed in a manner that that they could give rise to the mistaken belief that they emanate from the same source.

 

Moreover, 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). Even if consumers of the compared goods and/or services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

Taken together, applicant’s and registrant’s marks are similar, the goods and/or services are related, and 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.

 

Accordingly, the following refusal made final in the Office action dated August 26, 2021 is maintained and continued: 

 

• PARTIAL REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION- AS TO CLASSES 25 AND 35 ONLY

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

In addition, the following requirement made final in that Office action is obviated: 

 

• IDENTIFICATION OF GOODS AND/OR SERVICES

See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/Shari Gadson/

Shari Gadson

Trademark Examining Attorney

Law Office 120

United States Patent and Trademark Office

571-272-9319

shari.gadson@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 30, 2022 for

U.S. Trademark Application Serial No. 79298624

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·       Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.