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: August 27, 2020
On July 29, 2019, action on this application was suspended pending the disposition of U.S. Application
Serial No. 87639711. The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.
In the Suspension Letter, the trademark examining attorney maintained the refusal of registration of the applied-for mark based
on the following: Trademark Act Section 2(d) for a likelihood of confusion with U.S. Registration Nos. 4392932 and 4414626.
The following refusal(s) have also been obviated: Trademark Act Section 2(d) for a likelihood of
confusion with U.S. Registration Nos. 4414626 due to cancellation of the mark. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues
below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
- Section 2(d) Refusal – Likelihood Of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of
confusion with the mark in U.S. Registration No. 4392932. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the 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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160,
1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
Comparison of Marks
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)), aff’d per curiam, 777 F. App’x
516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, the applied-for mark is NICOLET, while the registered mark is NICOLETTE.
The applied-for mark incorporates the registered mark. Incorporating the
entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer
design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER
and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In
re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case,
the marks are identical in part for the wording NICOLET.
Further, both marks are in standard character and thus can be displayed in the same manner. 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 applicant argues that their previous registration coexisted with the registered mark, however, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the
Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790,
1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA
Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
The applicant further argues the marks are pronounced differently, however, there
is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed.
Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in
question could clearly be pronounced the same; such 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).
In sum, given the highly similar appearance, meaning, connotation, and commercial impression of the registered and applied-for marks it follows that consumers will confuse the
marks.
Comparison of Goods/Services
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).
The applicant’s goods are “Jewelry; Watch parts; Watches.”
The registrant’s goods are “Women's clothing, namely, dresses, suits, pants and jackets.”
The attached Internet evidence in this office action and the pervious office action 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:
- http://www.nyandcompany.com/,who provides jewelry, watches,
and Women's clothing, namely, dresses, pants and jackets
- http://www.loft.com, who provides jewelry, watches, and Women's
clothing, namely, dresses, suits, pants and jackets
- http://shop.guess.com, who provides jewelry, watches, and Women's
clothing, namely, dresses, pants and jackets
- http://www.brooksbrothers.com/, who provides jewelry,
watches, watch parts, and Women's clothing, namely, dresses, pants and jackets
- http://www.luckybrand.com/, who provides jewelry, watches, and
Women's clothing, namely, dresses, pants and jackets
- http://www.katespade.com/, who provides jewelry, watches, and
Women's clothing, namely, dresses, pants and jackets
- http://www.toryburch.com/, who provides jewelry, watches, and
Women's clothing, namely, dresses, pants and jackets
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).
Applicant’s claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the
certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on
the cited registration. TMEP §1207.01(d)(iv).
In total, the registered marks and the applied-for mark create the same commercial impression and the evidence shows that the goods are likely to be encountered together
in the marketplace by the same consumers. Thus, consumers are likely to make the mistaken conclusion that the goods originate from the same source. Therefore, a likelihood of confusion exists and
registration is refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
Please call or email the assigned trademark examining attorney with questions about this Office
action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or
requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application
record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding
requirements and refusals and/or click to file
a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Valerie Kaplan/
Trademark Examining Attorney
Law Office 107
571-272-6767
valerie.kaplan@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.
