Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 09, 2019

 

 

This letter responds to applicant’s communication dated 05/31/2019.   As a result of applicant’s amended identification which limits goods substantially, U.S. Registration Nos. 5234711, 5217816, 4340851, & 4340849 and U.S. prior pending application nos. 87632241 & 87632224 are hereby withdrawn.   Please note, however that U.S. Registration No. 5519814 continues to be a good cite against the applicant.

 

Additionally, the applicant’s amended identification of goods is unacceptable as submitted due to applicant’s use of parentheses in the listing of the goods.

 

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 5519814.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  In addition, the following requirement is now made FINAL:  the request for an acceptable, amended identification of goods.  See TMEP §1402.12. See 37 C.F.R. §2.63(b).

 

 

 

SECTION 2(d) FINAL REFUSAL

 

 

Registration was refused under section 2(d) of the Trademarks Act because applicant’s mark THIRD EYE for Life-saving and teaching apparatus, namely, buoyancy clothing, flotation clothing for lifesaving purposes, flotation clothing for emergency lifesaving, inflatable (safety) clothing; dive goggles; dive masks; swim goggles; goggles for sport; sunglasses; protection and safety apparatus, namely, inflatable flotation devices, life vests, floatation vests; dive fins; swim fins is likely to be confused with  3RDEYEGIRL, U.S. Registration No. 5519814 for Short-sleeved or long-sleeved t-shirts.  The applicant took registrant’s part of the mark, namely, 3RDEYE and listed it as THIRD EYE.  Although the marks vary slightly in appearance they are pronounced the same THIRD EYE/3RD EYE.  

 

The applicant deleted matter from the registrant’s mark, namely, the word GIRL and created its own mark by spelling the rest of the mark differently but having the same significance.   Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Although the applicant limited its channels of trade it still features clothing items that are likely to travel through the same channels of trade and they are likely to be encountered by the same consumers.

 

Neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

The examining attorney attaches evidence in the nature of excerpts from the Internet to show that the goods of the applicant and those of the registrant are related.  The evidence is intended to support a section 2(d) likelihood of confusion refusal.  See below.

 

 

• http://www.outdoorgb.com/c/life_jackets_buoyancy_aids/?s=10350. – buoyancy devices and t-shirts.
• http://www.teampurple.co.uk/category-lifejackets-&-buoyancy-aids-26.html – buoyancy devices and clothing such as t-shirts.
• http://www.nookie.co.uk – buoyancy devices and clothing.
• http://www.lifeshirt.com/ - buoyancy shirts as flotation devices.
• http://www.amazon.com/TYR-Kids-Flotation-Shirt/dp/B06Y2Y3DW2. – flotation shirt.

 

Therefore, for the reasons listed above the refusal to register under section 2(d) of the Trademarks Act is now continued and made FINAL.

 

 

 

IDENTIFICATION OF GOODS IS UNACCEPTABLE AS SUBMITTED – FINAL REFUSAL

 

 

The identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

 

Additionally, the identification of goods is indefinite and must be clarified because the applicant failed to specify what the inflatable safety clothing comprise.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The amended identification should read as follows:

 

“Life-saving and teaching apparatus, namely, buoyancy clothing, flotation clothing for lifesaving purposes, flotation clothing for emergency lifesaving, inflatable (safety) clothing, namely, inflatable life jackets; dive goggles; dive masks; swim goggles; goggles for sport; sunglasses; protection and safety apparatus, namely, inflatable flotation devices, life vests, floatation vests; dive fins; swim fins, in International Class 9.”

 

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.

 

 

 

MAY NOT EXPAND THE IDENTIFICATION

 

 

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).

 

 

Therefore, for the reasons listed above the refusal to register under TMEP §1402.01 & TMEP §1402.12 is also continued and made FINAL.

 

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Blandu, Florentina/

Examining Attorney

U.S. Patent & Trademark Office

L.O. 117

Florentina.Blandu@uspto.gov

tel 571 272-9128

fax 571 273-9128

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 09, 2019 for

U.S. Trademark Application Serial No. 88072992

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Blandu, Florentina/

Examining Attorney

U.S. Patent & Trademark Office

L.O. 117

Florentina.Blandu@uspto.gov

tel 571 272-9128

fax 571 273-9128

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”