UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
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: 6/8/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on May 13, 2019.
The Examining Attorney acknowledges and accepts the amended identification of goods in Class 25 and the substitute specimen.
The following FINAL refusal is now issued.
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(s). 4,288,526. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
The evidence attached to the previous Office Actions is incorporated herein by reference.
Trademark Act Section 2(d) – Final Refusal
Registration of the applied-for mark is refused and made FINAL because of a likelihood of confusion with the mark in U.S.
Registration No. 4,288,526. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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 seeks
registration of TAN’S for goods identified as head scarves, mufflers as neck scarves, neck scarfs, neck scarves and shoulder scarves.” The mark TAN’S CLUB in Reg. No. 4,288,526 for goods and services
that include “Aprons; Bandanas; Baseball caps; Beanies; Headbands; Shirts; Sweat shirts; Wristbands” in Class 25 and “On-line retail store services featuring Clothing, Bandanas, Beanies, Baseball
Caps, Wristbands, Headbands, Aprons, Sweatshirts, Towel, Throws, Tote bags, Folding Chairs, Insulated Containers for Beverage Cans; On-line wholesale store services featuring Clothing, Bandanas,
Beanies, Baseball Caps, Wristbands, Headbands, Aprons, Sweatshirts, Towel, Throws, Tote bags, Folding Chairs, Insulated Containers for Beverage Cans; Retail shops featuring Clothing, Bandanas,
Beanies, Baseball Caps, Wristbands, Headbands, Aprons, Sweatshirts, Towel, Throws, Tote bags, Folding Chairs, Insulated Containers for Beverage Cans;” in Class 35 has been cited as a bar against
registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
The Applicant’s mark TAN’S and the Registrant’s mark TAN’S CLUB create
similar commercial impressions because the Applicant’s mark is identical to the dominant portion of the Registrant’s mark. 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).
Although marks are
compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly
similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie
Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
The dominant
portion of the mark in the cited registration is TAN’S. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or
service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the
first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between
CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303,
128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words
first”).
It is
well-settled that 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).
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 second
issue for consideration is whether the goods and services of the parties are related. The goods and/or services 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
and/or services 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 and/or services] 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).
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).
In addition, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those
goods. TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128
USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In
re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van
Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v.
Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v.
Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
The following printouts attached to the December 13, 2018 Office Action
demonstrate that businesses that offer scarves also offer shirts, sweat shirts, baseball caps, beanies and/or bandanas, and retail and online retail store
services:
L.L.
Bean
Retail Stores and Online Retail Stores
- http://www.llbean.com/?&qs=3085166_GOOGLE&Matchtype=e&gclid=EAIaIQobChMI4NTRiv2d3wIVz1qGCh0iAge9EAAYASAAEgJrTfD_BwE&gclsrc=aw.ds
Scarves - http://www.llbean.com/llb/search/?freeText=scarves&init=1
Bandanas - http://www.llbean.com/llb/search/?freeText=bandanas&init=1
Shirts - http://www.llbean.com/llb/shop/589?page=mens-shirts&csp=f&bc=12-26&sort_field=Relevance&start=1&viewCount=48&nav=ln-26
Baseball Caps - http://www.llbean.com/llb/search/?freeText=baseball+caps&init=1
Sweat shirts - http://www.llbean.com/llb/search/?freeText=sweatshirt&init=1
The Vermont Country
Store
Retail Stores and Online Retail Stores -
http://www.vermontcountrystore.com/
Scarves, Baseball caps and beanies
- http://www.vermontcountrystore.com/searchresults?Ntt=scarves&Nty=1&No=0&Nrpp=12&Rdm=566&searchType=simple&type=search
Shirts - http://www.vermontcountrystore.com/searchresults?Nr=product.active%3A1&Ntt=shirts&Nty=1&No=0&Nrpp=1
http://www.vermontcountrystore.com/searchresults?Ntt=sweat%20shirts&Nty=1&No=0&Nrpp=12&Rdm=146&searchType=simple&type=search2&Rdm=174&searchType=simple&type=search
Sweat Shirts - http://www.vermontcountrystore.com/searchresults?Ntt=sweat%20shirts&Nty=1&No=0&Nrpp=12&Rdm=146&searchType=simple&type=search
Talbots
Retail Stores and Online Retail Stores -
http://www.talbots.com/online/
Scarves - http://www.talbots.com/online/accessories/scarves/_/N-10626
Shirts - http://www.talbots.com/online/search/ntt-shirt
Lands’
End
Retail Stores and Online Retail Stores -
http://www.landsend.com/
Scarves -
http://www.landsend.com/search?initialSearch=true&q=scarves
Shirts - http://www.landsend.com/search?initialSearch=true&q=shirts
Baseball Caps -
http://www.landsend.com/search?initialSearch=true&q=baseball+caps
Beanies - http://www.landsend.com/search?initialSearch=true&q=beanie
Sweat Shirts -
http://www.landsend.com/search?initialSearch=true&q=women%27s+sweat+shirts
(See printouts attached to December 13, 2018 Office Action).
This attached Internet evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or
services under the same mark and that the relevant goods and/or services 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 and/or services 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).
The trademark
examining attorney attached evidence to the December 13, 2018 Office Action 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 and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein,
namely, the Applicant’s scarfs or scarves and the Registrant’s shirts, baseball caps, headbands, or sweatshirts, and the Registrant’s retail store services, 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).
Inasmuch as the marks are similar and the goods and services are related,
a likelihood of confusion exists.
Proper Guidelines for Response to Final Refusal
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).
Assistance
Please call or email the assigned trademark examining attorney with questions
about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining
attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02,
709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the
application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
Richards, Susan
/Susan A. Richards/
Susan A. Richards
Trademark Examining Attorney
Law Office 103
(571) 272-8266
Susan.Richards@uspto.g
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.