To: | Woodley, Ameen Ali (TeamDominance56@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87248070 - TD - N/A |
Sent: | 6/22/2017 10:39:45 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87248070
MARK: TD
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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: Woodley, Ameen Ali
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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. 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: 6/22/2017
THIS IS A FINAL ACTION.
This Office action is supplemental to and supersedes the previous Office action issued on June 22, 2017 in connection with this application. The assigned trademark examining attorney inadvertently issued the Office Action with a typographical error in the refusal relevant to the mark in the subject application. See TMEP §§706, 711.02.
The trademark examining attorney apologizes for any inconvenience.
Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated June 22, 2017.
Applicant must respond to all issues raised in this Office action and the previous June 22, 2017 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
This Office action is in response to applicant’s communication filed on May 9, 2017.
In a previous Office action dated March 3, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirements: clarify the entity by providing the citizenship of the partners, amend the identification of goods, and clarify the color claim and mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: color claim clarified. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is “TD” in stylized form for “clothing for athletic use, namely, padded shirts; hoodies; shirts for adults and children; bottoms; jackets; t-shirts for adults and children; tops; women's clothing, namely, shirts, dresses, skirts, blouses; wrist bands” in International Class 025.
Reg. No. 4936770 is for “TD” in stylized form for “blouses; dresses; skirts” in International Class 025.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Additionally, the goods are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
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 “TD” in stylized form and registrant’s mark is “TD” in stylized form. Thus, the word portions of these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods because it is that portion of the mark that consumers use when referring to or requesting the goods. 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)). Therefore, the stylization of both marks does not distinguish the marks for purposes of a likelihood of confusion analysis.
Furthermore, the stylization of the applied-for mark and the stylization of the registered mark are similar. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1322, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))). Both the applied-for mark and the registered mark consists of the letter “T” placed within the letter “D”. Therefore, although the wording “TD” is the dominant portion of the applied-for mark and the registered mark, the stylization of the marks is similar as well.
Applicant argues that the applied-for mark differs from the registered mark because the applied-for mark is in three different colors and a particular font style. Applicant also argues that the mark means “Team Dominance.” However, the examining attorney is not persuaded by these conclusions as the evidence of record supports the position that the dominant portion of the marks is the wording, which is identical.
Therefore, the marks are confusingly similar.
Comparison of the Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
Applicant’s mark is for “clothing for athletic use, namely, padded shirts; hoodies; shirts for adults and children; bottoms; jackets; t-shirts for adults and children; tops; women's clothing, namely, shirts, dresses, skirts, blouses; wrist bands” in International Class 025.
Reg. No. 4936770 is for “blouses; dresses; skirts” in International Class 025.
Notably, both applicant and registrant offer shirts, dresses, and skirts.
Applicant has not submitted argument against the similarity of the goods. Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the goods are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d) and the refusal is now made final.
CITIZENSHIP OF PARTNERS REQUIRED
If applicant is a U.S. partnership, the following format should be used to identify the partnership:
“_____________________, a partnership organized under the laws of _______________, composed of ______________ (specify name, legal entity, and citizenship of each individual general partner; and/or name, legal entity, and state or foreign country of incorporation or organization of each juristic general partner).”
TMEP §803.03(b).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. TMEP §§1201, 1201.02(b).
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
Applicant may substitute the following wording, if accurate:
International Class 025: Clothing for athletic use, namely, padded shirts; hoodies; shirts for adults and children; bottoms; jackets; t-shirts for adults and children; tops; women's clothing, namely, shirts, dresses, skirts, blouses; wrist bands
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.
COLOR CLAIM AND MARK DESCRIPTION REQUIRE AMENDMENT
The drawing shows the applied-for mark in various colors, including black and white. Although the application includes a claim of color and a mark description referencing color, the colors black, and white are not included in either the color claim or description. The color claim and mark description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether black and/or white are being claimed as color and/or are intended to indicate background, outlining, shading and/or transparent areas. TMEP §807.07(d).
To clarify whether black and white are being claimed as color, applicant must satisfy one of the following:
(1) If black and/or white are being claimed as colors in the mark, applicant must amend the color claim to include these colors, and amend the mark description to identify the literal and design elements that include these colors and specify where the black and/or white appears in these elements; or
(2) If black and/or white are not being claimed as colors in the mark, applicant must provide a statement that the colors black and/or white represent background, outlining, shading and/or transparent areas and are not part of the mark.
Id.
Therefore, applicant must provide a more detailed description of the applied-for mark. The following is suggested if black and white are claimed as a feature of the mark:
Color claim: The colors red, black, and white are claimed as a feature of the mark.
Mark Description: The mark consists of the letters “TD” in red with jagged edges, outlined in black and further outlined in white. The letter “T” vertically intersects the letter “D”. The color black is only claimed as a feature of the mark as to the outlining of the letters and otherwise represents background.
RESPONSE GUIDELINES
(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).
/Tricia L. Brown/
Examining Attorney
Law Office 121
(571) 270-7892
tricia.brown@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.