To: | MYCOSKIE, LLC (trademarkdocketing@arnoldporter.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88076499 - EARTHWISE - 26766.00002 |
Sent: | 11/29/2018 11:21:14 AM |
Sent As: | ECOM105@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 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88076499
MARK: EARTHWISE
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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: MYCOSKIE, LLC
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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: 11/29/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3132475 (the “Leber Mark”) and Reg. Nos. 4423437, 5127770, and 5127827 (the “Earthwise Marks”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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. 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
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark EARTHWISE. The Leber Mark is EARTHWISE JEWELRY. The Earthwise Marks are EARTHWISE, EARTHWISE with a design element, and BE WISE EARTHWISE.
Both applicant and registrants’ marks prominently feature the word EARTHWISE. Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a highly similar commercial impression of wisdom and the planet Earth.
The fact that one of the registered marks contains a design element does not prevent confusion. 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. 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)).
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods 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] 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).
In the present case, applicant has applied for the mark for use in connection with:
Class 25: Clothing, namely, hats, caps, sweatshirts, sweatpants, and shirts; and footwear
The Leber Mark is registered for use in connection with:
Class 14: Jewelry
The Earthwise Marks are registered for use in connection with:
Class 18: All-purpose carrying bags; Tote bags; mesh shopping bags; Reusable shopping bags made of non-woven polypropylene
Class 18: all-purpose reusable carrying bags
The attached internet evidence from Lorna Jane, L.L. Bean, and Yeti shows that the same source that offers all-purpose carrying bags, tote bags, and other goods like those identified by the Earthwise Marks registrant commonly also offers clothing goods like the goods listed by applicant under the same mark. http://www.lornajane.com/collection/accessories/multi-purpose-gym-bag/p-A051729_BLK_One_Sz; http://www.lornajane.com/collection/tops/balance-l-slv-top/p-111814_PDROSE; http://www.llbean.com/llb/shop/516672?originalProduct=35198&productId=583228&attrValue_0=Black&pla1=0&mr%3Adevice=c&mr%3AadType=plaonline&qs=3125171&gclid=Cj0KCQiAuf7fBRD7ARIsACqb8w6pc3u6tRQa2z3sOQPyuNmoHbnjacao4d__D6P1ZfjEv5yDbmEKCjsaAjMrEALw_wcB&gclsrc=aw.ds; http://www.llbean.com/llb/shop/18145?page=two-layer-river-driver-s-shirt-traditional-fit-henley&bc=12-26-589&feat=589-GN1&csp=f; http://www.yeti.com/en_US/camino-carryall-35/26010000000.html?country=US¤cy=USD&CAWELAID=120329620000001852&CAGPSPN=pla&CAAGID=52353251672&CATCI=pla-533685412318&utm_id=google_882093014_52353251672_251247180712_pla-533685412318_c&gclid=Cj0KCQiAuf7fBRD7ARIsACqb8w77lEIzrBbwTrodxLxHwKSgiSWK2WmJnX-TKHlPA_nV3la3VifNug4aAoIAEALw_wcB; http://www.yeti.com/en_US/yeti-patch-full-panel-hat/21023000673.html?cgid=apparel#start=1.
The attached internet evidence from Go Fish, IGWT, and Anthropologie shows that the same source that offers jewelry like the goods identified by the Leber Mark registrant commonly also offers clothing goods like the goods listed by applicant under the same mark. http://www.shopgofish.com/collections/clothing/products/teach-peace-ladies-tee-in-lilac; http://www.shopgofish.com/collections/jewelry/products/mother-of-pearl-necklace; http://ingodwetrustnyc.com/collections/womens-tops/products/fowler-top-navy-twill; http://ingodwetrustnyc.com/collections/necklaces/products/talisman-tassel-necklace-malachite; http://www.anthropologie.com/shop/leslie-swing-top?category=tops&color=001; http://www.anthropologie.com/shop/florence-post-earrings?category=jewelry&color=001.
Applicant and registrants’ goods are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrants’ goods are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the goods of applicant and registrants. Accordingly, the proposed mark creates a likelihood of confusion with registered marks, and registration is properly refused on the Principal Register under Section 2(d).
CLARIFICATION OF IDENTIFICATION OF GOODS REQUIRED
Applicant may substitute the following wording, if accurate (changes indicated in bold and strikethrough):
Class 25: Clothing, namely, hats, caps being headwear, sweatshirts, sweatpants, and shirts; and footwear
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.
ASSISTANCE
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.
Robert N. Guliano
/Robert N. Guliano/
Examining Attorney
Law Office 105
571-272-0174
robert.guliano@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.