To: | No Carbs Company AB (ipdocketing@foley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87103789 - NOCCO - 105442-0109 |
Sent: | 10/25/2016 1:59:39 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87103789
MARK: NOCCO
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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: No Carbs Company AB
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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: 10/25/2016
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.
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 No. 4450510. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied for mark is NOCCO for “Clothing, tops, bottoms, shirts, t-shirts, long sleeve t-shirts, tank tops, sweatshirts, blazers, blouses, sweaters, pants, slacks, shorts, coats, jackets, underwear; Active wear and fitness apparel, namely, tops, fleece tops, tank tops, t-shirts, shirts, polo shirts, pants, shorts, bottoms, jackets, zip up jackets; swimwear; Sportswear; Performance sportswear; Athletic wear, namely, sweatshirts, sweat pants, sweat jackets, hooded sweat shirts, hooded pullovers, sweat shorts, cowls, gym suits, sweat suits, warm-up suits, shell suits, track suits, wetsuits, rash guards, sports bras, athletic shorts, athletic tops and bottoms for gymnastics, jogging pants, yoga pants, athletic tights, athletic sleeves, arm warmers, base layers, vests, leggings, socks, leotards; Training shoes; Athletic footwear; Footwear; footwear, namely, cycling shoes, athletic shoes, gymnastic shoes; Headwear, namely, hats, caps, visors, headbands, beanies and bandanas; Headgear; Clothing Accessories, namely, belts, scarves, shawls, shoulder wraps, arm warmers, mittens, gloves, sweat bands”. The registered marks is NOCO WE OWN THE NYTE for “Clothing, namely, tops, bottoms, headwear, footwear, blouses, jackets, undergarments, pants”.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, the applicants mark NOCCO is similar to the registrant’s mark NOCO WE OWN THE NYTE in sound, appearance and connotation. Both marks share the identical dominant feature which is the word NOCO. 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. While the registrant’s mark does contain additional wording, the wording NOCO in the registrants mark is the first word of the mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Furthermore, while this dominant wording is spelled differently, it is pronounced the same. The marks are essentially phonetic equivalents and thus sound similar. 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).
Accordingly, in present case the marks are confusingly similar.
Relatedness of the Goods
The respective goods and/or services 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 and/or services] 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).
The applicant’s goods of “Clothing, tops, bottoms, shirts, t-shirts, long sleeve t-shirts, tank tops, sweatshirts, blazers, blouses, sweaters, pants, slacks, shorts, coats, jackets, underwear; Active wear and fitness apparel, namely, tops, fleece tops, tank tops, t-shirts, shirts, polo shirts, pants, shorts, bottoms, jackets, zip up jackets; swimwear; Sportswear; Performance sportswear; Athletic wear, namely, sweatshirts, sweat pants, sweat jackets, hooded sweat shirts, hooded pullovers, sweat shorts, cowls, gym suits, sweat suits, warm-up suits, shell suits, track suits, wetsuits, rash guards, sports bras, athletic shorts, athletic tops and bottoms for gymnastics, jogging pants, yoga pants, athletic tights, athletic sleeves, arm warmers, base layers, vests, leggings, socks, leotards; Training shoes; Athletic footwear; Footwear; footwear, namely, cycling shoes, athletic shoes, gymnastic shoes; Headwear, namely, hats, caps, visors, headbands, beanies and bandanas; Headgear; Clothing Accessories, namely, belts, scarves, shawls, shoulder wraps, arm warmers, mittens, gloves, sweat bands.” are similar to the registrant’s goods of “Clothing, namely, tops, bottoms, headwear, footwear, blouses, jackets, undergarments, pants” because the both parties are offering clothing. In fact, the applicant’s goods encompass the registrant’s goods and are virtually identical.
Conclusion
Since the marks are similar which creates the same commercial impression and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods. Therefore, the applicant’s mark is not entitled to registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Clothing, namely, tops, bottoms, shirts, t-shirts, long sleeve t-shirts, tank tops, sweatshirts, blazers, blouses, sweaters, pants, slacks, shorts, coats, jackets, underwear; Active wear and fitness apparel, namely, tops, fleece tops, tank tops, t-shirts, shirts, polo shirts, pants, shorts, bottoms, jackets, zip up jackets; swimwear; Sportswear, namely, {specify the type of clothing the sportswear consists of, e.g. sports bras, sport shirts, etc}; Performance sportswear, namely, {specify the type of clothing the sportswear consists of, e.g. sports bras, sport shirts, etc}; Athletic wear, namely, sweatshirts, sweat pants, sweat jackets, hooded sweat shirts, hooded pullovers, sweat shorts, cowls, gym suits, sweat suits, warm-up suits, shell suits, track suits, wetsuits, rash guards, sports bras, athletic shorts, athletic tops and bottoms for gymnastics, jogging pants, yoga pants, athletic tights, athletic sleeves, arm warmers, base layers, vests, leggings, socks, leotards; Training shoes; Athletic footwear; Footwear; footwear, namely, cycling shoes, athletic shoes, gymnastic shoes; Headwear, namely, hats, caps, visors, headbands, beanies and bandanas; Headgear, namely, {specify the type of headgear, e.g. hats, caps}; Clothing Accessories, namely, belts, scarves, shawls, shoulder wraps, arm warmers, mittens, gloves, sweat bands.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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. See TMEP §1402.04.
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.
/Lakeisha S. Munn Lewis/
Trademark Examining Attorney
Law Office 105
571-272-1910
lakeisha.lewis@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.