| To: | BIGFOOT PROPERTIES (EUROPE) N.V. (jonathan@ckl.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 86863814 - BIGFOOT - N/A |
| Sent: | 4/22/2016 2:27:09 PM |
| Sent As: | ECOM111@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 |
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. 86863814
MARK: BIGFOOT
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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: BIGFOOT PROPERTIES (EUROPE) N.V.
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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: 4/22/2016
Summary of Issues
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. 4778284 (regarding Class 9); 3707574 (regarding Class 9); 3505787 (regarding Class 9); 3802011 (regarding Class 9); and 1973606 (regarding Class 25). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Applicant has applied for Classes 9 and 25. For purposes of organization and convenience, the Office categorizes the refusal regarding the respective marks based upon International Class.
Applicant has applied for the mark BIGFOOT for “Computer Hardware; Computer Software; Computer peripherals; Electronic data processing installations; computer network apparatus; parts and fittings for all the aforesaid goods” in Class 9 and for “Clothing; fashion garments; footwear and headgear; swimwear; sportswear and leisurewear” in Class 25.
The registered marks are for the following:
BIGFOOT (U.S. Reg. No. 4778284) for “Audio circuit boards; Audio speaker enclosures; Audio speakers” in Class 9; BIGFOOT (U.S. Reg. No. 3707574) for “Computer software for the management of assets and, in particular, management of the maintenance of facilities and equipment” in Class 9; BIGFOOT (U.S. Reg. No. 3505787) for “Computer software for the management of assets and, in particular, management of the maintenance of facilities and equipment” in Class 9; BIGFOOT NETWORKS (U.S. Reg. No. 3802011) (disclaimer of NETWORKS) FOR “Communications software for connecting computer network users; Computer hardware and software for setting up and configuring local area networks; Computer hardware and software for setting up and configuring wide area networks; Computer network adapters, switches, routers and hubs; Computer network hubs, switches and routers; Computer networking hardware; Computer software for administration of computer networks” in Class 9; and BIGFOOT (U.S. Reg. No. 1973606) for “T-shirts, jerseys, jackets and caps” in Class 25.
In each instance, applicant’s and registrants’ marks are identical, all using the word BIGFOOT, while the respective Computer Hardware; Computer Software; Computer peripherals and Clothing vs. computer hardware, computer software and peripherals for a specific use are extremely similar, if not identical and clothing goods are also extremely similar if not identical. As a result, confusion is likely in each instance.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF THE MARKS
In the present case, applicant’s mark is BIGFOOT and, with the exception of BIGFOOT NETWORKS, all of the other registrants’ marks are BIGFOOT.
In regards to the registered BIGFOOT marks and applicant’s BIGFOOT mark, they are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
With respect to the registered mark, BIGFOOT NETWORKS, and applicant’s BIGFOOT mark, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).
The commercial impression of applicant’s mark BIGFOOT and registrant’s mark BIGFOOT NETWORKS is similar. They both are comprised either in whole or significant part of the term “BIGFOOT” in connection with similar goods. While marks are compared in their entireties in a Likelihood of Confusion analysis, one feature of a mark may be recognized as more significant in creating a commercial impression, and greater weight is given to that dominant feature. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii). “BIGFOOT” appears to be the dominant feature of the marks as it comprises all of applicant’s mark and does actually dominate registrant’s mark as the word “NETWORK” has the effect of describing a feature or function of registrant’s goods, giving it less trademark significance than “BIGFOOT”
Moreover, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii). Here, “BIGFOOT” is shared by both the applicant and the registrant and can be visually confusing to consumers when encountering either mark in connection with complimentary goods.
Therefore, the marks are confusingly similar.
The goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” 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).
CLASS 9
Here, applicant is seeking registration in connection with computer hardware and peripherals as well as unspecified computer software, electronic data processing installations, computer network apparatus and parts and fittings it is seeking to provide. Applicant’s computer hardware and peripherals are identical to the goods provided by the registrants as U.S. Reg. No. 3802011 provides “Computer hardware and software for setting up and configuring local area networks; Computer hardware and software for setting up and configuring wide area networks” and U.S. Reg. No. 4778284 provides “audio speakers” which are a type of computer peripheral.
Applicant has also identified their remaining goods of “computer software, electronic data processing installations, computer network apparatus and parts and fittings” in such a broad manner as to include “Computer software for the management of assets and, in particular, management of the maintenance of facilities and equipment” (U.S. Reg. No. 3707574 and 3505787) as well as “Communications software for connecting computer network users; Computer hardware and software for setting up and configuring local area networks; Computer hardware and software for setting up and configuring wide area networks; Computer network adapters, switches, routers and hubs; Computer network hubs, switches and routers; Computer networking hardware; Computer software for administration of computer networks” (U.S. Reg. No. 3802011).
In connection with applicant’s proposed goods and the registered goods, please note that the respective trade channels are presumed to be identical in this instance. The application contains no 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. 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).
Therefore, applicant’s goods are highly related to the registered goods.
CLASS 25
Applicant’s goods are related to the registered goods because they both consist of clothing. The question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Here, has not specified what type of clothing, fashion garments, sportswear or leisurewear they are providing. The applicant’s identification is written so broadly so as to include the registrant’s goods of T-shirts, jerseys, jackets and caps.
Furthermore, 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).
Therefore, applicant’s goods are highly related to the registered goods.
The overriding concern is not only to prevent buyer confusion as to the source of the goods, 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, 1026 (Fed. Cir. 1988).
Since the marks are identical and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Applicant must specify the type computer software, electronic data processing installations, computer network apparatus, and parts and fittings for all the aforesaid goods the mark is used on. Applicant may adopt the following identification, if accurate:
Class 9: “Computer Hardware; Computer Software{Specify type of computer software e.g. “Computer anti-virus software”; “Computer game software”; “Computer communications software to allow customers to access bank account information and transact bank business”; “Computer graphics software”; “Computer hardware and software system for tracking people, objects and pets using GPS data on a device on the tracked people, objects and pets”; “Computer hardware and software used for the control of voice controlled information and communication devices”}; Computer peripherals; Electronic data processing installations {Specify type of Electronic data processing installations e.g. “Electronic data processing apparatus”}; computer network apparatus {Specify type of Computer network apparatus e.g “Computer network adapters, switches, routers and hubs”; “Computer network adapters”}; parts and fittings for all the aforesaid goods {Specify what parts and fittings related to computers}”
Class 10: Orthodontic Headgear
Class 18: Clothing for animals
Class 25: “Clothing {Specify type of clothing e.g. Clothing for athletic use, namely, padded pants/shirts/shorts”; “Clothing, namely Bottoms, tops”; “Sweaters for {specify wearer, e.g., babies, adults, children, women, men, etc.”}; “fashion garments {Specify what type of fashion garments}; footwear and headgear {Specify type of headgear e.g. “Headgear, namely, {specify type, e.g., hats, caps}}”; swimwear; sportswear {Specify type of sportswear} and leisurewear {Specify type of leisurewear}”
Class 28: Headgear for dolls
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Multiple-Class Application Requirements
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
§44(d) SOLE BASIS WITH NO INTENTION TO PERFECT TO §44(e)
The application specifies Trademark Act Section 44(d) as the sole filing basis, but indicates that applicant does not intend to rely on Section 44(e) as a basis for registration. See 15 U.S.C. §1126(d), (e). Applicant is advised that, while Section 44(d) provides a basis for receipt of a priority filing date, it does not provide a basis for publication or registration, which is required for an application. 15 U.S.C. §1126(d); TMEP §1003.03.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e) as a basis for registration, and applicant’s statement in the application that he or she does not intend to rely on a Section 44(e) basis was inadvertently submitted, then applicant should so specify. In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016. A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration is not yet available, applicant should respond to this Office action to indicate that the foreign application is still pending and request suspension of the U.S. application until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
(2) If applicant does not intend to rely on Section 44(e) as a basis for registration, applicant must establish a basis for registration under Section 1(a) or basis for publication under Section 1(b) by satisfying the relevant requirements. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03; see 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b). Please note that applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
ADVISORY- FOREIGN APPLICATION MUST BE FROM APPLICANT’S COUNTRY OF ORIGIN
In the present case, the U.S. application shows that applicant has a domicile in Belgium, but the foreign application was filed in Ukraine.
Because applicant’s domicile is in a country different from the country in which the foreign application was filed, and from which the foreign registration will issue, applicant will need to establish that this country is applicant’s country of origin as of the date of issuance of the foreign registration. See 15 U.S.C. §1126(c); TMEP §§1002.02, 1002.04. This requirement may be satisfied by providing the following written statement for the record, once the foreign registration issues: “Applicant has had a bona fide and effective industrial or commercial establishment in Ukraine as of the date of issuance of the foreign registration.” TMEP §1002.04.
If applicant will not be able to assert that the country in which the foreign registration has issued is applicant’s country of origin, registration under Section 44(e) will be refused. See 15 U.S.C. §1126(c); TMEP §1002.01-.02. In that case, applicant may delete the Section 44(e) basis and substitute Section 1(a) or 1(b), if applicant can satisfy all the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §§806.03, 1002.02. However, applicant may still retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Claudia Garcia/
Examining Attorney
Law Office 111
(571) 272-6939
claudia.garcia@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.
