To: | Goop Inc. Limited (lsubramanian@morrisoncohen.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85646719 - GOOP - 022244-0002( |
Sent: | 3/27/2013 3:24:09 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85646719
MARK: GOOP
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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: Goop Inc. Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/27/2013
THIS IS A FINAL ACTION.
This letter responds to applicant’s communication filed on March 15, 2013. The examining attorney acknowledges and has entered into the record applicant’s amended identification of goods for classes 3, 7, 16, 20, 21 and 32. The examining attorney issued an office action to amend the identification of goods for classes 24 and 25.
The likelihood of confusion refusal as to U.S. Registration No. 0557190 for the goods in class 3 is withdrawn.
LIKELIHOOD OF CONFUSION REFUSAL: THIS REFUSAL APPLIES TO CLASS(ES) 25 ONLY
For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). 3517557. 37 C.F.R. §2.64(a).
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods. The overriding concern is to prevent buyer confusion as to the source of the goods. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).
In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods. Industrial Nucleonic Corp. v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (CCPA 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. If the goods of the parties differ, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755 (TTAB 1977).
The applicant’s mark is ‘GOOP’ used to identify “dresses; skirts; blouses; shirts; T-shirts; pants; trousers; denim jeans; shorts; jackets; coats; shoes; boots; slippers; scarves; hats and other headwear; knitwear, namely, sweaters, leg warmers and arm warmers; gloves; belts; hosiery; socks; lingerie; waistcoats; pullovers; sweatshirts; loungewear; fitnesswear, namely, sweat pants, track pants, yoga pants, capris, athletic shorts, athletic skirts, leggings, headbands, wristbands, jumpsuits, sports underwear, leotards, jerseys, long-sleeve athletic shirts, short-sleeve athletic shirts, tank tops, camisoles, athletic shoes, athletic jackets; bathing suits; bath robes; pajamas.” The examining attorney has refused applicant’s mark citing the mark ‘GOOP’ for “T-shirts; shirts; sweat pants; sweat shirts; jerseys; tank-tops; shorts; jackets; coats; belts; hats; fleece pullovers; sweaters; jeans; pants; overalls; swimsuits; trunks; bandanas; shoes; sandals; socks; pajamas; underwear; briefs; thermal underwear; belts made of leather.” Because applicant’s mark is identical to the registered mark and the goods are also highly similar, the examining attorney has refused registration of applicant’s mark under Section 2(d), 15 U.S.C. 1052(d).
Applicant argues that the likelihood of confusion refusal should be withdrawn because the registrant is no longer using the mark in commerce. Applicant does not contest that its mark is identical to the registered mark or that its clothing items are similar to the registrant’s clothing items. Applicant argues that the owner of the cited registration has abandoned its trademark and/or service mark due to nonuse. However, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services. See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).
Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.
For the foregoing reasons, the examining attorney’s refusal as to the goods in class 25 is herein made FINAL.
Applicant must respond within six months of the date of issuance of this final Office action or the following class(es) to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: class 25. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following class(es): classes 3, 4, 5, 7, 8, 9, 14, 16, 18, 20, 21, 24, 32, 33 and 41.
Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).
/Won T. Oh/
Law Office 114
(571)272-9204
won.oh@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.