UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87487984
MARK: VIVO
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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: VIVO INTERNATIONAL 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. 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: 8/1/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
Applicant has applied for VIVO (in standard character form) for, in relevant part, “Precious metals; jewellery; precious stones; chronometric instruments” in class 14 and “Clothing; footwear; headgear; swimwear; sportswear; leisurewear” in class 25.
U.S. Registration No. 3708310, XOVIVO (in standard character form), is for, in relevant part, “jewelry” in class 14.
U.S. Registration Nos. 3097876 and 4303162 are owned by the same registrant. No. 3097876, V VIVOBAREFOOT (in design form), is for “Footwear, namely, boots, shoes, sandals and slippers” in class 25. No. 4303162, VIVOBAREFOOT (in standard character form), is for, in relevant part, “Bags, namely, handbags, rucksacks and backpacks; all-purpose carrying bags; all-purpose athletic bags; purses; wallets; briefcases; suit-cases, travelling bags and luggage” in class 18 and “Footwear for men, women and children; footwear featuring insoles for men, women and children; footwear featuring moisture wicking inserts for men women and children; clothing for men, women and children, namely, shirts and socks; head wear for men, women and children; baseball caps” in class 25.
U.S. Registration Nos. 4779436 and 4421221 are owned by the same registrant. No. 4779436, ARGENTOVIVO (in standard character form), is for “Clothing, footwear and headgear for men, women and children, namely, belts, coats, raincoats, waistcoats, blouses and pullovers, jackets, trousers, dresses, suits, swimsuits, shirts and chemises, t-shirts, sweaters, underwear, hosiery, socks and stockings, tights, gloves, ties, scarves, hats and caps, leather shoes, rubber shoes, low shoes, sandals, straw shoes, slippers, sport shoes, shoe soles, shoe liner, bath sandals, bath slippers, boots, lace shoes, half boots, outsole, shoe upper” in class 25. No. 4421221, ARGENTO VIVO (in standard character form), is for “jewelry” in class 14.
U.S. Registration No. 4485233, FEEL VIVO (in design form), for, in relevant part, “Fitness and casual apparel, namely, shirts, pants, under garments, headwear, socks, scarves, suspenders” in class 25.
U.S. Registration No. 4930347, GOVIVO (in standard character form), is for, in relevant part, “Clothing, namely, tops, bottoms, headwear, footwear; Belts; Running belts; Athletic apparel, namely, reflective vests, reflective wrist bands” in class 25.
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
Applicant’s mark VIVO is highly similar to the registered marks XOVIVO, V VIVOBAREFOOT, VIVOBAREFOOT, ARGENTOVIVO, ARGENTO VIVO, FEEL VIVO, and GOVIVO because applicant’s mark “carves out” a portion of each registered mark. Further, although each registered mark has additional material such as wording and/or design components, applicant’s mark has nothing to differentiate itself from any of the registered marks. “Carving out” a portion of a registered mark does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Further, although Nos. 3097876 and 4485233 have design components, because applicant’s mark is in standard character form, applicant could choose to display its mark in an identical manner to that of either registrant. 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”).
Therefore, the marks are confusingly similar.
Relatedness of the Goods
Class 14
The goods of the parties are closely related. The goods of applicant, “jewellery,” is identical to No. 3708310’s “jewelry” and No. 4421221’s “jewelry.” When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods 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)).
Absent restrictions in an application and/or registration, the identified goods are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the identifications set forth in the application and registrations are identical and have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Accordingly, the goods of applicant and the registrants are considered related for purposes of the likelihood of confusion analysis.
Further, applicant’s remaining Class 14 goods, “Precious metals; precious stones; chronometric instruments,” are closely related to No. 3708310 and No. 4421221’s “jewelry” because jewelry stores commonly provide precious metals and stones and chronometric instruments as well.
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Class 25
The goods of the parties are closely related. Applicant’s “clothing; footwear” is broadly written and, as such, encapsulates the more narrowly identified goods of No. 3097876, “Footwear, namely, boots, shoes, sandals and slippers,” No. 4303162, “Footwear for men, women and children; footwear featuring insoles for men, women and children; footwear featuring moisture wicking inserts for men women and children; clothing for men, women and children, namely, shirts and socks; head wear for men, women and children; baseball caps,” No. 4779436, “Clothing, footwear and headgear for men, women and children, namely, belts, coats, raincoats, waistcoats, blouses and pullovers, jackets, trousers, dresses, suits, swimsuits, shirts and chemises, t-shirts, sweaters, underwear, hosiery, socks and stockings, tights, gloves, ties, scarves, hats and caps, leather shoes, rubber shoes, low shoes, sandals, straw shoes, slippers, sport shoes, shoe soles, shoe liner, bath sandals, bath slippers, boots, lace shoes, half boots, outsole, shoe upper,” No. 4485233, “Fitness and casual apparel, namely, shirts, pants, under garments, headwear, socks, scarves, suspenders,” and No. 4930347, “Clothing, namely, tops, bottoms, headwear, footwear; Belts; Running belts; Athletic apparel, namely, reflective vests, reflective wrist bands.”
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the identification set forth in the application and registrations has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrants’ more narrow identification.
Further, applicant’s remaining Class 25 goods, “headgear; swimwear; sportswear; leisurewear,” are closely related to the above-identified Class 25 goods of the registrants, and No. 4303162’s “Bags, namely, handbags, rucksacks and backpacks; all-purpose carrying bags; all-purpose athletic bags; purses; wallets; briefcases; suit-cases, travelling bags and luggage,” because swimwear, sportswear, and leisurewear are types of clothing, and because providers of clothing also commonly provide headgear, footwear, and bags.
Thus, consumers familiar with the above-identified goods of U.S. Registration Nos. 3708310, 3097876, 4303162, 4779436, 4421221, 4485233, and 4930347 in connection with the marks XOVIVO, V VIVOBAREFOOT, VIVOBAREFOOT, ARGENTOVIVO, ARGENTO VIVO, FEEL VIVO, and GOVIVO, upon encountering applicant’s “Precious metals; jewellery; precious stones; chronometric instruments” and “Clothing; footwear; headgear; swimwear; sportswear; leisurewear” in connection with the mark VIVO, are likely to be confused and believe that the goods originate with the same source. Registration on the Principal Register is, therefore, refused under Section 2(d) of the Trademark Act.
Advisory – Prior-Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
REQUIREMENT – AMEND IDENTIFICATION OF GOODS
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Applicant may also amend the identification for “headgear” by inserting the word “namely,” after “headgear” and then listing the specific types of headgear items in that class (e.g., hats, berets, bonnets, or headbands for International Class 25).
Class 14: Acceptable as currently written
Class 25: Clothing, namely, [specify type, such as pants, shirts, etc.]; footwear; headgear, namely, [specify type, such as caps being clothing, bonnets, etc.]; swimwear; sportswear, namely, [specify type, such as jogging suits, pants, etc.]; leisurewear, namely, [specify type, such as pants, shirts, etc.]
Class 26: Lace; embroidery; ribbons; braid; buttons; hooks and eyes; [specify type, such as hair, sewing, etc.] pins; needles; artificial flowers
Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Advisory – §44(d) with Intent to Perfect to §44(e)
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must 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. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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 inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is 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 $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.
Assistance
/Joan Blazich/
Joan Blazich
Examining Attorney
Law Office 122
(571) 272-7810
joan.blazich@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.