UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 8/30/2012

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues Applicant Must Address

 

• Section 2(d) Refusal(s)

 

Applicant should also note the prior pending application reference below. 

 

Refusal - Section 2(d) – 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. 2902127 (BS for “footwear”), 3400914 (BS for “T-shirts, caps, sweat shirts, tank tops, hooded sweatshirts”), 3636382 (BS for “A-shirts; Ankle socks; Baby tops; Bandanas; Baselayer tops; Beach shoes; Belts; Belts made of leather; Belts of textile; Board shorts; Body linen; Boxer shorts; Canvas shoes; Capri pants; Cargo pants; Coats; Coats for men and women; Coats made of cotton; Coats of denim; Crop tops; Denim jackets; Down jackets; Dress shirts; Dresses; Fabric belts; Finished textile linings for garments; Fleece shorts; Hat bands; Hats; Headgear, namely, hats, caps, beanie, bandanas,; Heavy coats; Heavy jackets; Hooded sweat shirts; Jacket liners; Jackets; Knit shirts; Leather shoes; Long-sleeved shirts; Men's socks; Muscle tops; Panties, shorts and briefs; Pants; Shirts; Shoes; Shorts; Skirts; Snowboard pants; Socks; T-shirts; Under garments”), 3855860 (BS for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Denims; Gym pants; Hat bands; Hats; Headgear, namely, skull caps; Hooded sweat shirts; Moisture-wicking sports shirts; Pants; Shirts and short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; T-shirts”), 3060168 (BS for “Apparel, namely, Athletic footwear, belts, caps and beanies, footwear for men and women, hats, headwear, jackets, Polo shirts, shirts, sweatshirts, shoes, slippers, socks, shirts, Sports shirts, t-shirts”) and 3959734 (BS for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Body shirts; Hooded sweat shirts; Long-sleeved shirts; Pants; Shirts; Shirts and short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sport shirts; Sports pants; Sports shirts; Sports shirts with short sleeves; Stretch pants; Sweat pants; Sweat shirts; T-shirts; Tee shirts; Yoga pants; Yoga shirts”).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

            A.         General Principles in Determining Likelihood of Confusion:

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

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.

 

B.               Similarity of the Marks:

 

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).

 

In the present matter, the applicant has applied to register the mark BS in standard characters.  The six registrants referenced above have registered the marks BS with particular stylization or a design feature.  The marks are very similar based on applicant’s BS vs. registrants’ BS.  This is because these components are identical and dominant in the marks.

 

Applicant should note that 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.

 

Further, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such 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, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

            C.        Relatedness of the Goods and/or Services:

 

The applicant’s goods and/or services (“Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Balaclavas; Beanies; Clothing for athletic use, namely, padded pants; Headbands; Sweatshirts; Wearable garments and clothing, namely, shirts”) are related to the registrants’ goods:

 

2902127 (“footwear”),

3400914 (“T-shirts, caps, sweat shirts, tank tops, hooded sweatshirts”),

3636382 ( “A-shirts; Ankle socks; Baby tops; Bandanas; Baselayer tops; Beach shoes; Belts; Belts made of leather; Belts of textile; Board shorts; Body linen; Boxer shorts; Canvas shoes; Capri pants; Cargo pants; Coats; Coats for men and women; Coats made of cotton; Coats of denim; Crop tops; Denim jackets; Down jackets; Dress shirts; Dresses; Fabric belts; Finished textile linings for garments; Fleece shorts; Hat bands; Hats; Headgear, namely, hats, caps, beanie, bandanas,; Heavy coats; Heavy jackets; Hooded sweat shirts; Jacket liners; Jackets; Knit shirts; Leather shoes; Long-sleeved shirts; Men's socks; Muscle tops; Panties, shorts and briefs; Pants; Shirts; Shoes; Shorts; Skirts; Snowboard pants; Socks; T-shirts; Under garments”),

3855860 (“Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Denims; Gym pants; Hat bands; Hats; Headgear, namely, skull caps; Hooded sweat shirts; Moisture-wicking sports shirts; Pants; Shirts and short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; T-shirts”),

3060168 (“Apparel, namely, Athletic footwear, belts, caps and beanies, footwear for men and women, hats, headwear, jackets, Polo shirts, shirts, sweatshirts, shoes, slippers, socks, shirts, Sports shirts, t-shirts”)

3959734 (“Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Body shirts; Hooded sweat shirts; Long-sleeved shirts; Pants; Shirts; Shirts and short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sport shirts; Sports pants; Sports shirts; Sports shirts with short sleeves; Stretch pants; Sweat pants; Sweat shirts; T-shirts; Tee shirts; Yoga pants; Yoga shirts”)

Because they include the identical goods, i.e., footwear; various headwear like hats, caps, headbands, beanies; various shirts like t-shirts and sweatshirts; various pants and jackets; athletic uniforms.  

 

            D.        Conclusion:

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

Since 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. 

 

            E.         Response Guidelines:

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the foregoing refusal(s)/requirements, then applicant should note the following advisory(ies).

 

Advisory – Potential Section 2(d) Refusal – Prior Pending Application

 

The filing date of pending Application Serial No. 85449633 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Advisory – Applicant May Wish to Seek Trademark Counsel

 

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.  Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. 

 

NOTE:  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Deirdre G Robertson/

Trademark Examining Attorney

Law Office 111

Phone No. (571) 272-8806

deirdre.robertson@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.  

 

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.

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85620567) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 8/30/2012 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 8/30/2012 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Deirdre G Robertson/

Trademark Examining Attorney

Law Office 111

Phone No. (571) 272-8806

deirdre.robertson@uspto.gov

 

 

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.