UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

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: 11/15/2017

 

The referenced application from C-Life Group, Ltd. (“Applicant”) 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.

 

SUMMARY OF ISSUES

 

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-filed Application Advisory
• New Specimen Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark, CHEMISTRY (“The Applied for Mark”), is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4057491 (“Registration 1” or “CHEMISTREE”), 4047982 (“Registration 2” or “KEMISTRY”), and 4773912 (“Registration 3” or “KEMESTRE”) (jointly, “The Registered Marks”).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration owned by Registrant.

 

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).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

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.

 

Similarity of the Marks

 

The Applied for Mark is CHEMISTRY. The Registered Marks are CHEMISTREE, KEMISTRY, and KEMESTRE. The marks are similar in sound, connotation, and commercial impression.

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  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).

 

The Applied for Mark is essentially the phonetic equivalent of The Registered Marks and thus the marks 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). This weighs heavily in favor of finding The Applied for Mark confusingly similar to The Registered Marks.

 

The Registered Marks are novel spellings or intentional misspellings of the word “CHEMISTRY”. A novel spelling or an intentional misspelling will not avoid a likelihood of confusion. See In re Lebanese Arak Corp., 94 USPQ2d 1215, 1219 (TTAB 2010) ("The question is whether KHORAN would be perceived as the word Koran, or whether it would be understood as a totally different word"); see also In re Hines, 31 USPQ2d 1685, 1691 (TTAB 1994) (implicitly recognizing the term BUDDA in BUDDA BEACHWEAR would be perceived as indicating the name of the religious figure "Buddha"), vacated on other grounds, 32 USPQ2d 1376 (TTAB 1994). In this case, The Applied for Mark is CHEMISTRY and The Registered marks are novel spellings or intentional misspellings of the word “CHEMISTRY” and would be perceived to be the word “CHEMISTRY”. This also weighs in favor of finding The Applied for Mark confusingly similar to The Registered Marks.

 

Therefore The Applied for Mark is confusingly similar to the registered marks.

 

SIMILARITY OF GOODS

 

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They 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 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).

 

 

Applicant uses the proposed mark in conjunction with “Hats; Hoodies; Knit bottoms; Knit jackets; Knit tops; Shirts; Tops as clothing; Track suits; Woven bottoms; Woven shirts; Woven tops; Graphic T-shirts; Jerseys” in Class 25. (Emphasis added)

 

CHEMISTREE is used in conjunction with “Clothing apparel, namely, shirts, shorts, hats, pants, shoes” in Class 25. (Emphasis added)

 

KEMISTRY is used in conjunction with “Bottoms; Dress shirts; Jackets; Jeans; Pants; Shirts; Shorts; Sweatshirts; T-shirts” in Class 25. (Emphasis added)

 

KEMESTRE.is used in conjunction with “Anti-perspirant socks; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic pants; Athletic shirts; Athletic shoes; Beach shoes; Boat shoes; Body shirts; Bomber jackets; Button down shirts; Cargo pants; Collared shirts; Crew neck sweaters; Denim jackets; Denims; Down jackets; Fashion hats; Graphic T-shirts; Gym pants; Hats; Heavy jackets; Heel pieces for shoes; Hiking jackets; Hooded sweat shirts; Jackets; Jeggings, namely, pants that are partially jeans and partially leggings; Jogging pants; Knit jackets; Knit shirts; Leather shoes; Leisure shoes; Long jackets; Long-sleeved shirts; Lounge pants; Men's and women's jackets, coats, trousers, vests; Men's socks; Mock turtle-neck sweaters; Outer jackets; Padded jackets; Pants; Pique shirts; Polo shirts; Rain jackets; Rainproof jackets; Reversible jackets; Rugby shirts; Shell jackets; Shirts; Shirts and short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Ski jackets; Ski pants; Sleep pants; Sleeved or sleeveless jackets; Small hats; Snow pants; Snowboard jackets; Snowboard pants; Socks; Sport shirts; Sports caps and hats; Sports jackets; Sports pants; Sports shirts; Sports shirts with short sleeves; Sports shoes; Stretch pants; Sweat jackets; Sweat pants; Sweat shirts; Sweaters; T-shirts; Tee shirts; Tennis shoes; Thermal socks; Track jackets; Track pants; Training shoes; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Trekking jackets; Turtle neck shirts; V-neck sweaters; Waterproof jackets and pants; Waterproof leather shoes; Waterproof leather shoes and boots; Wind pants; Wind resistant jackets; Wind shirts; Wind-jackets; Women's clothing, namely, shirts, dresses, skirts, blouses; Women's hats and hoods; Women's shoes. Yoga pants; Yoga shirts” in Class 25. (Emphasis added)

 

Applicant’s goods and the goods in The Registered Marks include Hats, Knit jackets, Shirts, and Graphic T-shirts. This weighs heavily in favor of finding applicant’s goods related to the goods in The Registered Marks.

 

The application and registrations use broad wording to describe the goods.  The application uses broad wording to describe Applicant’s “Tops as clothing” and “Track suits” which presumably encompasses all goods of the type described, including KEMISTRY’s  more narrow “Dress shirts; Jackets”, “Sweatshirts; T-shirts” and KEMESTRE’s more narrow “Athletic apparel, namely, shirts… jackets”, “Athletic shirts”, “Body shirts; Bomber jackets; Button down shirts”, “Collared shirts; Crew neck sweaters; Denim jackets”, “Down jackets”, “Heavy jackets”, “Hooded sweat shirts; Jackets”, “Knit shirts”, “Long jackets; Long-sleeved shirts”, “Men's and women's jackets, coats,…vests”, “Mock turtle-neck sweaters; Outer jackets; Padded jackets”, “Pique shirts; Polo shirts; Rain jackets; Rainproof jackets; Reversible jackets; Rugby shirts; Shell jackets; Shirts; Shirts and short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Ski jackets”, “Sleeved or sleeveless jackets”, “Snowboard jackets”, “Sport shirts”, “Sports jackets”, “Sports shirts; Sports shirts with short sleeves”, “Sweat jackets”, “Sweat shirts; Sweaters; T-shirts; Tee shirts”, “Track jackets; Track pants”, “Trekking jackets; Turtle neck shirts; V-neck sweaters; Waterproof jacket”, “Wind resistant jackets; Wind shirts; Wind-jackets; Women's clothing, namely, shirts, dresses, skirts, blouses”, and “Yoga shirts”. 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).

 

Similarly, the registrations use broad language to describe their “shorts” “pants”, “Bottoms”, “Dress shirts”, “Pants”, “Shorts; Sweatshirts; T-shirts”, “Athletic apparel, namely, shirts, pants, jackets…athletic uniforms”, “Button down shirts”, “Collared shirts”, “Hooded sweat shirts”, and “Knit shirts” which is presumed to include Applicant’s more narrow “Hoodies”, “Knit bottoms”, “Knit tops”, “Woven bottoms; Woven shirts; Woven tops”, and “Jerseys”. Id.

 

For the foregoing reasons, Applicant’s goods the goods in The Registered Marks are related for likelihood of confusion purposes.

 

With respect to trade channels, absent restrictions in an application and/or registration, the identified goods and/or services 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)). 

 

The identifications set forth in the application and registrations have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, for purpose of a likelihood of confusion analysis, it is presumed that Applicant’s goods and the goods in The Registered Marks travel in all normal channels of trade, and are available to the same class of purchasers.

 

Section 2(d) Analysis Conclusion

 

In total, The Applied for Mark is confusingly similar to The Registered Marks; Applicant’s goods are related to the registrants’ goods; and Applicant’s goods travel in the same trade channels as the registrants’ goods. Consequently, consumers are likely to be confused by the marks and mistakenly believe that the goods that these marks identify originate from a common source. Therefore, registration of The Applied for Mark must be refused under Trademark Act Section 2(d) because of a likelihood of confusion with The Registered Marks.

 

Although Applicant’s mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if Applicant responds to the refusal set forth above, Applicant must also respond to the refusal set forth below.

 

PRIOR-FILED APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 87318977 precedes Applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, Applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of Applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

NEW SPECIMEN REQUIRED

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 25 in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the specimen shows the mark on a bag; however Applicants goods are “Hats; Hoodies; Knit bottoms; Knit jackets; Knit tops; Shirts; Tops as clothing; Track suits; Woven bottoms; Woven shirts; Woven tops; Graphic T-shirts; Jerseys”.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

RESPONSE GUIDELINES

 

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.  

 

If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Louis Kolodner/

Examing Attorney

Law Office 122

(571)272-7562

Louis.Kolodner@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 11/15/2017 FOR U.S. APPLICATION SERIAL NO. 87568257

 

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 11/15/2017 (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.