To: | Friends of the Bantam Jeep Association, ETC. (vshekhar@babstcalland.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87805144 - BANTAM - 7899-1000 |
Sent: | 6/8/2018 9:07:59 AM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87805144
MARK: BANTAM
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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: Friends of the Bantam Jeep Association, ETC.
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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: 6/8/2018
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
BANTAM, in standard characters, for “Automobiles, namely, off-road vehicles and UTVs (Utility Terrain Vehicles); structural parts for all of the foregoing” in Class 12 (U.S. Registration No. 4773469).
BANTAM, in standard characters, for “[ Pants; shorts; sweatpants; ] hooded [ and crew neck ] sweatshirts; short-sleeved and long-sleeved t-shirts [, t-shirts with button down lapels; thermal underwear, namely, long-sleeved thermal underwear shirts ]” in Class 25 (U.S. Registration No. 4182910).
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
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.
1. Similarity of the Marks
The applicant’s mark: BANTAM, in standard characters.
The registrant’s mark: BANTAM, in standard characters (U.S. Registration No. 4182910).
BANTAM, in standard characters (U.S. Registration No. 4773469).
In the present case, applicant’s mark is “BANTAM” and registrant’s marks are “BANTAM”. 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), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). 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 registrants’ respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
2. Relatedness of the Goods and/or Services
The applicant’s goods and/or services are:
Class 25: t-shirts, tank tops, hooded sweatshirts, fleece 1/4 zip shirts, sweatshirts, hats and jackets.
Class 41: organization of an automobile-themed festival.
The registrants’ goods are:
Class 12: Automobiles, namely, off-road vehicles and UTVs (Utility Terrain Vehicles); structural parts for all of the foregoing (U.S. Registration No. 4773469).
Class 25: [ Pants; shorts; sweatpants; ] hooded [ and crew neck ] sweatshirts; short-sleeved and long-sleeved t-shirts [, t-shirts with button down lapels; thermal underwear, namely, long-sleeved thermal underwear shirts ] (U.S. Registration No. 4182910).
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services 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 registrations, 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services 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).
Further, the application uses broad wording to describe the goods in International Class 25 and this wording is presumed to encompass all goods of the type described, including those in U.S. Registration No. 4182910’s more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). For example, applicant’s identification of “t-shirts” is presumed to encompass the related listed goods in the identification of goods for U.S. Registration No. 4182910, including “short-sleeved and long-sleeved t-shirts”.
The attached Internet evidence, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark. This evidence shows that the applicant’s “t-shirts” and “organization of an automobile-themed festival” are commercially related and likely to be encountered together in the marketplace by consumers with U.S. Registration No. 4773469’s registrant’s “off-road vehicles” and U.S. Registration No. 4182910’s “sweatshirts” and “pants”. Therefore, consumers are likely to be confused and mistakenly believe that the products and services originate from a common source.
· http://nationaldaycalendar.com/jeep-4x4-day-april-4/ and http://www.jeep.com/jeep-life.html (showing Jeep organizing an automobile-themed festival to celebrate Jeep 4x4 day)
· http://www.gear.jeep.com/dept_prod.asp?dept_id=6 (showing Jeep offering various clothing including t-shirts and sweatshirts)
· http://www.jeep.com/4x4/faq-and-glossary.html?sid=1037056&KWNM=%2Bjeep+%2Boff+%2Broad&KWID=43700019417903336&TR=1&channel=paidsearch&gclid=CjwKCAjwr-PYBRB8EiwALtjbz6Hi07FaEBNl0inzupBdSpMOBZdzz70O4Z2MBWg6gVDbgJMKDKVYvhoC12UQAvD_BwE&gclsrc=aw.ds (showing Jeep offering off-road vehicles)
· http://shop.landroverusa.com/women.html (showing Land Rover offering various clothing including t-shirts and outerwear)
· http://www.landrover.com/experiences/lr-experience-drives/index.html (showing Land Rover offering off-road vehicles)
· http://www.jaguarlandrover.com/node/15012 (showing Land Rover organizing an automobile-themed festival highlighting Jaguar and Land Rover Tech)
· http://www.porsche.com/usa/eventsandracing/porscheclubs/ (showing Porsche offering various clubs with activities and events worldwide featuring the Porsche brand)
· http://www.porsche.com/usa/connect/ (showing Porsche offering off road vehicles with the Cayenne model with an off road precision App)
· http://www.porsche-design.us/ (showing Porsche offering various clothing apparel including t-shirts, jackets, and pants)
Thus, applicant’s and registrants’ goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
IDENTIFICATION OF GOODS & SERVICES-INDEFINITE-PARTIAL
The wording “organization of an automobile-themed festival” in International Class 41 is indefinite and must be clarified because it does not describe the actual nature of the goods and/or services offered. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may substitute the following wording, if accurate:
International Class 41: “Entertainment services, namely, organization of an automobile-themed festival”.
While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed. Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
MANDATORY ELECTRONIC FILING RULES ADVISORY
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
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.
Carolyn Wlodarczyk
/Carolyn Wlodarczyk/
Trademark Examining Attorney
Law Office 109
571-272-9273
carolyn.wlodarczyk@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.