To: | Trench Girls Ltd. (adi@trench.fashion) |
Subject: | U.S. Trademark Application Serial No. 88071834 - DIAMOND - N/A |
Sent: | July 23, 2019 01:55:30 PM |
Sent As: | ecom120@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88071834
MARK: DIAMOND
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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: Trench Girls Ltd.
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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: July 23, 2019
THIS IS A FINAL ACTION.
The Office has reassigned this application to the undersigned trademark examining attorney.
This Office Action is in response to applicant’s communication filed on May 28, 2019.
In a previous Office Action dated November 28, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following refusals, requirements, and advisories:
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:
See TMEP §§713.02, 714.04.
In addition, all prior pending references have been abandoned and no longer present a potential bar to registration.
After careful review and consideration, the trademark examining attorney maintains and now makes FINAL the refusals and/or 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:
REFUSAL: SECTION 2(D) LIKELIHOOD OF CONFUSION
MAINTAINED AND MADE FINAL
Applicant’s mark is DIAMOND for “financial services, namely, digital currency.”
Registrant’s mark is DIAMONDBACK and design for “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network.”
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/or 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.
Similarity of the Marks
Applicant’s mark is DIAMOND. Registrant’s mark is DIAMONDBACK and design. These marks are significantly similar because they share
the distinctive term “DIAMOND.” The presence of a design element in registrant’s mark is not sufficient for differentiation.
Although registrant’s mark includes a design element, this difference is not sufficient to obviate the refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although 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)).
As such, the marks are similar.
Relatedness of the Services
Applicant identifies, as amended, “Financial services, namely, providing a virtual currency for use by members of a fashion sharing marketplace that allows users to buy and sell clothing and fashion items”.
Registrant identifies “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network”.
Both applicant and registrant provide a financial service involving a digital, or virtual, currency. For this reason the services of the parties are significantly related under the Section 2(d) likelihood of confusion analysis.
In this case, the registrant uses broad wording to describe its financial services in the nature of “a virtual currency for use by members of an on-line community via a global computer network”, which, as explained in more detail in the “Applicant’s Argument’s section below, presumably encompasses all services of the type describe, including applicant’s more narrow “virtual currency for use by members of a fashion sharing marketplace. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
Moreover, the trademark examining attorney has attached evidence of internet websites that provide the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, the provision of financial services involving digital currency and virtual currency, are of a kind that may emanate from a single source under a single mark. See attached internet evidence from http://coin.fashion/#section2, http://delouvois.com/product-category/luxury/fashion-luxury-goods/, http://openbazaar.org/, and www.overstock.com. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
For this reason, the services are related.
Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5575322. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
APPLICANT’S ARGUMENTS ARE NOT PERSUASIVE
First, applicant argues that the marks must be considered in their entireties because the shared usage of the word “DIAMOND” does not cause a likelihood of confusion where its mark is one word in standard characters and applicant’s mark is a unitary word in stylized form.
Indeed, 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. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[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)).
Additionally, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). In this case, the literal elements “DIAMOND” and “DIAMONDBACK” are likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. Thus, although 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)).
Further, the design element in registrant’s mark reinforces the impression of the word “DIAMOND”. The round cut, facet depiction, and sparkle-like color shading in the design is commonly associated with round diamonds. See attached internet evidence providing the characteristics of round diamonds http://www.jamesallen.com/loose-diamonds/round-cut/, www.lumeradiamonds.com, and www.ritani.com. Here, registrant’s design reflects at least 50 round diamonds of increasing size in a swirl pattern that are above the literal element “DIAMONDBACK”. The placement of the diamond design above the literal element causes consumers to draw a correlation between the design of diamonds and the word “DIAMOND”, as contained in the literal element. Thus, “DIAMOND” is the dominant literal element in the mark and that impression is reinforced by the adjacent design of at least 50 diamonds.
Finally, the additional literal elements in registrant’s mark also emphasize the word “DIAMOND”. Internet evidence provides that the word “BACK” is commonly associated with currency. See attached evidence from http://www.ahdictionary.com/word/search.html?q=greenback, providing that a greenback, emphasis added, is a note of US currency. In this case, registrant’s literal element “DIAMONDBACK” could be interpreted as a word play on “greenback” whereas “BACK” is used as a suffix to describe a form of “DIAMOND” currency. Such that, registrant’s resulting mark emphasizes “DIAMOND” and “BACK” is the de-emphasized as the suffix.
Second, applicant argues that, although it and registrant utilize virtual currency for financial services, there is almost no overlap between their services because its mark is used distinctively on a mobile application and is marketed to millennials who are mainly female. Applicant further provides that a defined genre within a broad class does not automatically constitute a likelihood of confusion among goods and/or services.
However, there is a likelihood of confusion present where registrant’s services encompass applicant’s services. Determining likelihood of confusion 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 In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registration uses broad wording to describe “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network”, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “Financial services, namely, providing a virtual currency for use by members of a fashion sharing marketplace that allows users to buy and sell clothing and fashion items”, as amended. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Specifically, “an online community” overlaps with a “fashion sharing marketplace,” as such a marketplace could also be an online community.
Here, applicant’s amended identification details who can use it virtual currency services and the items that can be purchased therein. Applicant’s response arguments that further specify its services are not considered because determining likelihood of confusion 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 In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Nonetheless, applicant’s amended identification does not escape the relatedness of its services with registrant’s services because registrant, on the other hand, provides online usage of virtual currency by members of an on-line community with no further limitation. Such that, registrant’s services can be accessed via a mobile application and presumable marketed to the same millennials who are mainly female.
For example, internet evidence provides that it is common for virtual currency to be used for fashion purchases in online communities. See attached evidence from http://coin.fashion/#section2, http://delouvois.com/product-category/luxury/fashion-luxury-goods/, http://openbazaar.org/, and www.overstock.com. The evidence supports a finding that registrant has the liberty to market to the same demographics and provide the same usage methods as applicant. Therefore, applicant’s services are contained within registrant’s services and the services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods and/or services are related.
For the stated reasons, a likelihood of confusion is present between applicant’s and registrant’s marks.
PROPER RESPONSE TO FINAL OFFICE ACTION- FULL REFUSAL/REQUIREMENTS
(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).
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.
Shari Gadson
/Shari Gadson/
Trademark Examining Attorney
Law Office 120
571-272-9319
shari.gadson@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.