To: | Radchuk, Yuriy (usptotrademark@stoneslaw.net) |
Subject: | U.S. Trademark Application Serial No. 88037626 - SIMAX - 2019-00583 |
Sent: | December 09, 2019 02:38:55 PM |
Sent As: | ecom123@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88037626
Mark: SIMAX
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Correspondence Address:
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Applicant: Radchuk, Yuriy
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Reference/Docket No. 2019-00583
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 09, 2019
This Office action is supplemental to and supersedes the previous Office action issued on May 15 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Identification of Goods and Services Amendment Requirement. See TMEP §§706, 711.02.
In a previous Office action dated May 15, 2019, 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 two registered marks.
Based on applicant’s response, the trademark examining attorney notes that the following refusal has been withdrawn: Section 2(d) Refusal for Registration No. 5271248 (“SIMAX”). See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Identification of Goods and Services Amendment Requirement
• Section 2(d) Refusal – Likelihood of Confusion
Applicant must respond to all issues raised in this Office action and the previous May 15, 2019 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).
IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIREMENT
Therefore, applicant must delete “selling” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail apparel stores featuring athletic uniforms.”
Applicant may adopt the following identification, if accurate:
Class 25: [no amendment required]
Class 35: Retail apparel stores featuring selling athletic uniforms
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is “SIMAX” for “athletic uniforms” in Class 25 and “Retail apparel stores selling athletic uniforms” in Class 35.
Registrant’s mark is “SIMMAX” for “All-purpose carrying bags; All-purpose sport bags; Baby carrying bags; Backpacks, book bags, sports bags, bum bags, wallets and handbags; Bags for carrying babies' accessories; Briefbags; Clutch bags; Evening handbags; Fashion handbags; Garment bags for travel; Handbags for ladies; Handbags, purses and wallets; Leather bags and wallets; Leather and imitation leather bags; Leather and imitation leather sport bags and general purpose trolley bags; Messenger bags; Sport bags; Waist bags; Leather handbags” in Class 18.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant’s mark is “SIMAX”.
Registrant’s mark is “SIMMAX”.
Applicant’s mark and registrant’s mark are nearly identical in appearance, sound, and overall commercial impression. 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).
Therefore, the marks are confusingly similar.
Comparison of Goods and Services
Applicant’s goods and services are “athletic uniforms” in Class 25 and “Retail apparel stores selling athletic uniforms” in Class 35.
Registrant’s goods are “All-purpose carrying bags; All-purpose sport bags; Baby carrying bags; Backpacks, book bags, sports bags, bum bags, wallets and handbags; Bags for carrying babies' accessories; Briefbags; Clutch bags; Evening handbags; Fashion handbags; Garment bags for travel; Handbags for ladies; Handbags, purses and wallets; Leather bags and wallets; Leather and imitation leather bags; Leather and imitation leather sport bags and general purpose trolley bags; Messenger bags; Sport bags; Waist bags; Leather handbags” in Class 18.
This evidence establishes that the same entity commonly provides and markets the relevant goods under the same mark through the same trade channels to the same classes of consumers in the same fields of use.
Additionally, the use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii). Here, the attached evidence from www.augustasportswear.com, www.boombah.com, www.championteamwear.com, www.cliffkeen.com, www.nike.com, and www.underarmour.com demonstrates that the relevant goods and services are commonly provided by the same source under the same mark.
Based on the attached evidence, therefore, applicant’s and registrant’s goods and 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).
Applicant did not argue against the finding of similarity of marks and similarity of goods and services in its Request for Reconsideration, but instead only narrowed the identification of goods and services. See November 15, 2019 request for reconsideration. However, as demonstrated above, the amended identification does not obviate likelihood of confusion.
Overall, applicant’s mark and registrant’s mark are confusingly similar. Additionally, the evidence demonstrates that the goods and services are related. Therefore, there is likelihood of confusion between the marks, and registration is accordingly refused under Section 2(d) of the Lanham Act.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Bianca Allen/
Trademark Examining Attorney
Law Office 123
(571) 272-5667
bianca.allen@uspto.gov
RESPONSE GUIDANCE