UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

FINAL 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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/5/2017

 

 

THIS IS A FINAL ACTION.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

This Office action is in response to applicant’s communication filed on June 12, 2017.  The potential 2(d) has abandoned (and is accordingly withdrawn).  The refusals to register under Section 2(d) as to Registrations Nos. 4082856, 4104761 and 4504303; and 4502010 are continued and made FINAL.

 

Summary of Issues

 

The following is a summary of issues:

 

(1)  Likelihood of Confusion – Final Refusal(s) to Register under Section 2(d)

 

 

Likelihood of Confusion – Final Refusal to Register under Section 2(d)

 

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). 4082856, 4104761 and 4504303; and 4502010.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Registration Nos. 4082856, 4104761 and 4504303

 

Similarities of the Marks

 

The applicant’s mark is BEYOND (stylized font, underlined and over-lined).  The registrant’s marks are BEYOND (Standard Character mark), BEYOND CLOTHING (Standard Character mark, with disclaimer of generic wording “CLOTHING”), and BEYOND (stylized font and hexagonal shape design element).  All three registered marks are owned by a single registrant, namely, 5.11 Inc.

 

The registered mark BEYOND (Standard Character mark) compared to the Applicant’s mark is the strongest cite.  A Standard Character mark can take any stylization/font.  The Applicant’s underline and over-lined features would like not be referenced in anyway by a consumer “calling for” the goods.  They do not truly raise to the level of a “design” feature, but merely appear to be underlining and over-lining or emphasizing the wording of “beyond”.  When “calling for” either parties’ goods by these marks, they would be particularly the same, namely, “BEYOND”.

 

A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In comparing the Applicant’s mark, BEYOND (with underline/over-line) and the registered mark BEYOND CLOTHING (Standard Character mark, with “CLOTHING” properly disclaimed as generic), the addition (or deletion) of the generic wording “CLOTHING” does not (necessary) create a wholly different overall impression.  At least one reading of this registered mark would be that BEYOND is the term that consumers will recall/remember and CLOTHING is describing the goods generically. Adding “clothing” to a mark for “clothing” is usually not enough to differentiate the marks.

 

In comparing the Applicant’s mark with the registered mark - BEYOND (and hexagonal design) – the additional of a design element does not change the way consumers will “call for” the registrant’s goods, namely, by the wording alone.

 

For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  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 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

The dominant part, the non-generic wording, in both parties’ marks is the same, namely, BEYOND.

 

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.

 

Relatedness of the Goods and the Channels of Trade

 

Both parties’ goods are clothing items, including standard clothing items such as: shirts, trousers/pants, and “ski pants”, and jackets.  These items are underlined and bolded below for emphasis.  As to these goods the goods are identical (and very similar).

 

The Applicant’s goods are “Shoes; boots; ankle boots; leather shoes; galoshes; rain boots; sports shoes; sandals; slippers; soles for footwear; heel pieces for shoes; footwear uppers; clothing items, namely, sweaters, cardigans, waistcoats, dresses, trousers, shorts, jerseys, raincoats, socks and stockings, stocking suspenders, sock suspenders, wind-resistant jackets, ski pants, fur coats, evening coats, overcoats, skirts, suits, jackets, undershirts, t-shirts; sports clothing, namely, sport jerseys and breeches for sports, sports over uniforms; shirts, collars, neckerchiefs, swimming costumes, tracksuits; wedding dresses; bath robes; underwear, brassieres, corsets, slips, underpants, briefs, nightshirts, housecoats, pyjamas, gloves, shawls, scarves, ties, bow ties, belts for clothing, braces; hats; caps” in Class 25.

 

The registered goods (all three registrations) are:

 

Reg. No. 4504303 BEYOND: Shirts, pants, trousers, overalls, rainproof pants, waterproof pants, wind pants, snowboard pants, hunting pants, jackets, coats, parkas, vests, rainproof jackets, waterproof jackets, shell jackets, wind jackets, snowboard jackets, hunting jackets; ski wear; headwear; underwear, baselayer bottoms, baselayer tops, in Class 25.

 

Reg. No. 4104761 BEYOND CLOTHING: Camouflage jackets; Camouflage pants; Capri pants; Cargo pants; Clothing, namely, base layers; Custom made to measure suits for men and women; Heavy jackets; Hunting jackets; Hunting pants; Jacket liners; Jackets; Jackets and socks; Jogging pants; Long jackets; Men's and women's jackets, coats, trousers, vests; Motorcycle jackets; Outer jackets; Pants; Rain jackets; Rainproof jackets; Shell jackets; Ski jackets; Ski pants; Sleeved or sleeveless jackets; Snow pants; Snowboard jackets; Snowboard pants; Sports jackets; Sports pants; Stretch pants; Waterproof jackets and pants; Wind resistant jackets; Wind-jackets, in Class 25.

 

Reg. No. 4082856 BEYOND (and design): Camouflage pants; Cargo pants; Hunting pants; Men's and women's jackets, coats, trousers, vests; Outer jackets; Pants; Rain jackets; Rainproof jackets; Shell jackets; Ski jackets; Ski pants; Sleeved or sleeveless jackets; Snow pants; Snowboard jackets; Snowboard pants; Waterproof jackets and pants; Wind resistant jackets, in Class 25.

 

As to clothing items vs. clothing items, these are a good 2(d) cite.

 

Neither the application nor the registration(s) 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).

 

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

As to the identical goods, such as “shirts, pants/trousers, ski pants, and jackets”:

 

Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); TMEP §1207.01(b).

 

Accordingly, these 2(d) cites are strong and continued and made FINAL.

 

Registration No. 4502010

 

Similarities of the Marks

 

The applicant’s mark is BEYOND (stylized, underlined, over-lined).  The registrant’s mark is BEYOND (stylized, lotus flower outline design).

 

The sole wording in both marks is the same, namely, BEYOND.  The underline/over-line in the Applicant’s mark and the lotus outline design in the registered mark are such that they will likely not be referenced by a consumer calling for the goods.  Consumers will use the wording, namely, BEYOND, to call for the respective parties’ goods.

 

The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Relatedness of the Goods and the Channels of Trade

 

The Applicant’s goods are “Shoes; boots; ankle boots; leather shoes; galoshes; rain boots; sports shoes; sandals; slippers; soles for footwear; heel pieces for shoes; footwear uppers; clothing items, namely, sweaters, cardigans, waistcoats, dresses, trousers, shorts, jerseys, raincoats, socks and stockings, stocking suspenders, sock suspenders, wind-resistant jackets, ski pants, fur coats, evening coats, overcoats, skirts, suits, jackets, undershirts, t-shirts; sports clothing, namely, sport jerseys and breeches for sports, sports over uniforms; shirts, collars, neckerchiefs, swimming costumes, tracksuits; wedding dresses; bath robes; underwear, brassieres, corsets, slips, underpants, briefs, nightshirts, housecoats, pyjamas, gloves, shawls, scarves, ties, bow ties, belts for clothing, braces; hats; caps” in Class 25.

 

The registered goods are “Bottoms; Bras; Dresses; Footwear; Headbands; Headwear; Jackets; Scarves; Tops; Underwear” in Class 25. 

 

Both parties’ goods include shoes/footwear (underlined above for emphasis).  The registered "tops" would encompass many of the Applicant's goods e.g. "sweaters, cardigans, jerseys, undershirts, t-shirts, shirts."  The registered "headwear" would encompass the Applicant's "hats, caps" (and possibly "neckerchiefs, shawls, scarves, etc.").  Both parties’ goods include “jackets” (and “coats”).  Both parties’ goods include “scarves”.  Both parties’ goods include underwear/undershirts.

 

The parties’ goods are standard clothing items vs. standard clothing items and include identical goods/clothes.  This is a strong 2(d) cite.

 

Accordingly, the refusal to register under Section 2(d) is continued and made FINAL.

 

Proper Response to Final Office Action – Full Refusal(s) and/or Requirement(s)

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); 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.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Gina M. Fink/

Trademark Examining Attorney, Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109

gina.fink@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/5/2017 FOR U.S. APPLICATION SERIAL NO. 87156392

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/5/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.