To: | Deco Slides, LLC (tm@myerswolin.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88082941 - DECO - DECO 8293 |
Sent: | 12/12/2018 2:43:07 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88082941
MARK: DECO
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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: Deco Slides, 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: 12/12/2018
Refusal Under Section 2(d) – Likelihood of Confusion
Applicant’s mark is DECO (in stylized form) for “Footwear; Footwear uppers; Sandals; Shoe soles; Shoe straps; Shoes” in International Class 25.
The mark in Reg. No. 4766704 is DECO (in standard characters) for “corsetry, namely, girdles and shapewear, namely, compression undergarments for non-medical use, namely, stockings, leggings, vests, camisoles, slips, petticoats, and shorts; swimwear for women; articles of lingerie for women; ladies' underwear; corsets; girdles and brassieres; ladies' undergarments; ladies' foundation wear, namely, brassieres, girdles, panties, chemises, and shapewear, namely, compression undergarments for non-medical use, namely, stockings, leggings, vests, camisoles, slips, petticoats, and shorts; hosiery for women” in International Class 25.
The mark in Reg. No. 4191743 is DECO for “Shirts; Tops” in International Class 25.
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
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The respective marks, DECO, DECO, and DECO, are highly similar in appearance, sound and meaning. All share the common dominant literal element, “DECO.” The only difference is that applicant’s mark is stylized.
In this case, the registered marks is in standard characters, which means it may be displayed in with any design or stylization, including the applicant’s. As such, the applicant’s design does not create a different commercial impression.
Thus, the applied-for mark is confusingly similar to the cited registration because the marks share the identical dominant literal element, which gives the marks the same commercial impression.
Relatedness of the Goods
The applicant’s “Footwear; Footwear uppers; Sandals; Shoe soles; Shoe straps; Shoes” are closely related to the registrants’ “Shirts; Tops” and “corsetry, namely, girdles and shapewear, namely, compression undergarments for non-medical use, namely, stockings, leggings, vests, camisoles, slips, petticoats, and shorts; swimwear for women; articles of lingerie for women; ladies' underwear; corsets; girdles and brassieres; ladies' undergarments; ladies' foundation wear, namely, brassieres, girdles, panties, chemises, and shapewear, namely, compression undergarments for non-medical use, namely, stockings, leggings, vests, camisoles, slips, petticoats, and shorts; hosiery for women” because these goods are commonly provided by the same entity under the same trademark.
In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective goods are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster Dictionary and American Heritage Dictionary shows that “deco” refers to “art deco,” which is “a popular design style of the 1920s and 1930s.” Additionally, the attached evidence from Dillard’s, Re-mix, and 6pm.com shows that “deco” is commonly used to describe shoes shows this wording is commonly used in connection with shoes to indicate that the shoes have elements of the art deco style. Thus, the wording merely describes applicant’s footwear because applicant’s footwear presumably has elements of the art deco style.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DECO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Responding to this Office Action
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.
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
571-272-3681
april.reeves@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.