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 08, 2019

Introduction

This Office action is in response to applicant’s communication filed on June 12, 2019.

In a previous Office action dated December 15, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Registration Nos. 4090958 (BABE), 4643670 (BABES), and 4457043 (LE BABE).  In addition, applicant was required to satisfy the following requirement:  clarify the mark description.  Applicant was also advised that two prior-filed marks may bar registration of the applied-for mark.

The prior-filed marks have abandoned, and therefore the prior-filed mark advisory is withdrawn.

Further, applicant submitted the following “miscellaneous statement” in the response: “THE MARK CONSIST OF THE STYLIZED WORDING" BABE" TO THE RIGHT OF THE WORDING IS THE STYLIZED DESIGN OF A HEART WHICH IS CONNECTED TO THE LETTER "B" BY A LONG WAVY LINE. I HAVE SEEN OTHER BABE MARKS AND OR LOGOS, MY LOGO HAS A UNIQUE HAND DRAWN FONT WITH A HEART CONNECTED AT THE END OF THE WORDING "BABE"”.  However, since the wording that appears to be a suggested mark description is combined with additional wording (i.e. “I HAVE SEEN OTHER BABE MARKS AND OR LOGOS, MY LOGO HAS A UNIQUE HAND DRAWN FONT WITH A HEART CONNECTED AT THE END OF THE WORDING "BABE"”) in a run-on sentence, it is not clear that an amended description has been submitted, or what the intended mark description is.  Therefore, the mark description requirement is maintained and made final.

In addition, the following refusal has been withdrawn:  Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Registration Nos. 4643670 (BABES) and 4457043 (LE BABE) only.  See TMEP §§713.02, 714.04.  Please note that the Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Registration Nos. 4090958 (BABE) is maintained and made final.  Applicant submitted arguments regarding the Section 2(d) refusal, but these arguments were not found persuasive for the reasons described below.

Therefore, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

All previous arguments and evidence, where applicable, are incorporated by reference herein.

Summary of Issues Made Final That Applicant Must Address:

·        FINAL Section 2(d) Refusal – Likelihood of Confusion – Maintained and Made Final

• FINAL Requirement – Description of the Mark – Maintained and Made Final

FINAL Section 2(d) Refusal – Likelihood of Confusion

Registration of the applied-for mark is finally refused because of a likelihood of confusion with the mark in U.S. Registration No. 4090958 (BABE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

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/or 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/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.

Applicant has applied for the mark BABE in special form for “Ear muffs; Hats; Pants; Scarfs; Shoes; Socks; Swim suits; Bomber jackets; Camouflage jackets; Denim jackets; Fur jackets; Heavy jackets; Lingerie accessories, namely, removable silicone breast enhancer pads used in a bra; Men's and women's jackets, coats, trousers, vests; Reversible jackets; Shell jackets; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses” in International Class 25.

Registration No. 4090958 is BABE in standard characters for “footwear, namely, sandals, sneakers, boots, slippers, wedges, flats, loafers, mules and dress shoes” in International Class 25.

Comparison of the Marks

Applicant’s mark and the cited U.S. Registration No. 4090958 (BABE) are likely to be confused due to their similarity.

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).

In the response, applicant argues that “I HAVE SEEN OTHER BABE MARKS AND OR LOGOS, MY LOGO HAS A UNIQUE HAND DRAWN FONT WITH A HEART CONNECTED AT THE END OF THE WORDING "BABE"”.  However, while applicant’s mark is in special form and has a particular font and heart design, the registrant’s mark is in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). The standard character registered mark could be displayed with stylization, font, and/or design elements similar to (or identical to) those in the applied-for mark, creating a likelihood of confusion.

Also, 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)). Here, the dominant word portion of the applied-for mark is BABE.

In the present case, there is a likelihood of confusion because of the identical wording in the marks.  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).  Here, the marks BABE and BABE have identical wording.  Therefore, the marks have a highly similar look and commercial impression.

Also, the marks are essentially phonetic equivalents and thus sound similar.  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, as the marks look and sound similar (or identical) and create a similar commercial impression, they are confusingly similar.

Comparison of the Goods

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).  Applicant did not submit arguments regarding the similarity of the goods.

Applicant’s and registrants’ goods include a variety of clothing goods.  Neither the application nor the registration 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).

As shown from the attached websites from whitehouseblackmarket.com, lanebryant.com, landsend.com, eddiebauer.com, and loft.com (as well as previously attached evidence from ae.com, gap.com, and hollisterco.com), it is quite common for the same parties to sell a variety of clothing items (such as tops, bottoms, swimwear, jackets, underwear, dresses, socks, hats, etc.) and footwear under the same mark.  This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark, and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’S goods 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).

Further, the trademark examining attorney has attached evidence (and has previously attached evidence) from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely a variety of clothing items (such as tops, bottoms, swimwear, jackets, underwear, dresses, silicone breast enhancer pads, vests, hats, socks, etc.) and footwear, are of a kind that may emanate from a single source under a single mark.  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).

Also, generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).  As discussed above, the marks are highly similar, and therefore a lesser degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion in this case.

Therefore, the goods are considered related in this analysis.

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

Because the marks are similar and the goods are related, there is a likelihood of confusion and applicant’s mark is not entitled to registration.

Although applicant’s mark has been refused registration, applicant may respond to the final refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the final refusal, applicant must also respond to the final requirement set forth below.

Final Requirement – Description of the Mark

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

Please note that applicant submitted the following “miscellaneous statement” in the response: “THE MARK CONSIST OF THE STYLIZED WORDING" BABE" TO THE RIGHT OF THE WORDING IS THE STYLIZED DESIGN OF A HEART WHICH IS CONNECTED TO THE LETTER "B" BY A LONG WAVY LINE. I HAVE SEEN OTHER BABE MARKS AND OR LOGOS, MY LOGO HAS A UNIQUE HAND DRAWN FONT WITH A HEART CONNECTED AT THE END OF THE WORDING "BABE"”.  However, since the wording that appears to be a suggested mark description is combined with additional wording (i.e. “I HAVE SEEN OTHER BABE MARKS AND OR LOGOS, MY LOGO HAS A UNIQUE HAND DRAWN FONT WITH A HEART CONNECTED AT THE END OF THE WORDING "BABE"”) in a run-on sentence, it is not clear that an amended description has been submitted, or what the intended mark description is.  Therefore, this requirement is maintained and made final.

The following description is suggested, if accurate: 

The mark consists of the stylized wording “BABE”. To the right of the wording is the stylized design of a heart, which is connected to the letter “B” by a long wavy line.

Advisory – Response to Final Action

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).

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

Ph: 571-272-4031

Jessica.Hilliard@uspto.gov

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 08, 2019 for

U.S. Trademark Application Serial No. 88093102

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. 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

Ph: 571-272-4031

Jessica.Hilliard@uspto.gov

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 08, 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.”