To: | K1 Speed, Inc. (processing@masiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85422647 - K1 - K1S1.TMA.e01 |
Sent: | 5/10/2012 8:47:55 AM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85422647
MARK: K1
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: K1 Speed, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 5/10/2012
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on 04/19/12.
The applicant amended the identification of goods. However, the amendment to the goods is insufficient to overcome the statutory refusal based on Section 2(d). The refusal to register is maintained and made FINAL.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3751086 and 3995729. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3751086 and 3995729. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
The applicant applied to register the mark K1 for “clothing specifically for racing, namely, racing suits, gloves, shoes, shirts, socks, hats, jackets, undergarments, head socks, neck collars, and vests.” The registered marks are a) K1 for “advertising and publicity services; retail store services or wholesale stores for woven fabrics and beddings; retail store services or wholesale stores for clothing; retail store services or wholesale stores for footwear; retail store services or wholesale stores for bags and pouches; retail store services or wholesale stores for personal articles, namely, towels, personal ornaments, accessories, fans, bandanas and headbands; retail store services or wholesale stores for foods and beverages,” and b) K1 for “sportswear, namely, jerseys, socks, warmup suits, track suits, jackets, pullovers, pants, and shorts.” The marks of the parties are very similar.
Marks of the Parties Compared
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq. The marks of the parties are very similar as to sound, meaning connotation and commercial impression. The applicant did not dispute the fact that the marks are highly similar. In a case like this, 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). Therefore, the examining attorney asserts that confusion is likely.
Comparison of the Goods
Here, the goods of the parties are closely related as they are specializes in clothing. Although the applicant amended the identification of goods, it is insufficient to overcome likelihood of confusion because the registrant’s identification of goods is very broad. Also, where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods and/or services need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a). Accordingly, the refusal to register under Section 2(d) is maintained and made FINAL.
Note:
(1) Deleting the goods and/or services to which the refusal pertains; CLASS 25.
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
More Options After a Final Refusal or Requirement
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Zachary R. Bello/
Trademark Attorney Advisor
Law Office 111
USPTO
571-272-9376
zack.bello@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.