| To: | Zander's LLC. (trademarks@harvey.law) |
| Subject: | U.S. Trademark Application Serial No. 88131573 - TRADER - N/A |
| Sent: | August 17, 2019 01:30:16 PM |
| Sent As: | ecom126@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88131573
Mark: TRADER
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Correspondence Address: FOUR EMBARCADERO CENTER, 14TH FLOOR
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Applicant: Zander's LLC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 17, 2019
This Office action is in response to applicant’s communication filed on July 9, 2019.
In a previous Office action dated January 9, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark and Trademark Act Section 2(e)1 for being merely descriptive. In addition, applicant was required to satisfy the following requirement: amend the identification of goods and/or services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusals 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
The Marks
The applied-for mark is TRADER, in standard characters, for “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Tie” in International Class 25, and “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” in International Class 35.
The registered marks are as follows:
TRADER SPORTS, in stylized characters and with design, for “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets” in International Class 25.
TRADER BAY, in standard characters, for “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts” in International Class 25.
TRADERPLUS, in standard characters, for “tutus” in International Class 25, and “On-line retail store services featuring women's clothing” in International Class 35.
Likelihood of Confusion Analysis
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 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. Each of these factors is addressed in the sections below.
Similarity of the Marks
The applied-for mark TRADER is confusingly similar to the registered marks TRADER SPORTS, TRADER BAY, and TRADERPLUS, which weighs in favor of a likelihood of confusion. The similarity of the applied-for mark to each of the registered marks is addressed in the subsections below.
TRADER SPORTS – U.S. Trademark Reg. No. 1242913
The applied-for mark TRADER is confusingly similar to the registered mark TRADER SPORTS, which weighs in favor of a likelihood of confusion
The applied-for mark TRADER is similar to the registered mark TRADER SPORTS because they both begin with the identical word TRADER. The applied-for mark omits the word SPORTS in the registered mark, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark in this case does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
The omission of SPORTS from the applied-for mark also fails to significantly distinguish it from the registered mark, because the word TRADER is the dominant portion of the registered mark. The word TRADER is the dominant portion of the registered mark because it is the first word in the registered mark. 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”).
The word TRADER is also the dominant portion of the registered mark because the word SPORTS merely describes registrant’s goods, and has been disclaimed. Marks are compared in their entireties, however one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Character stylization in the registered mark also fails to distinguish it from the applied-for mark, because the applied-for 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). 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”). Applicant in this case has claimed the right to display TRADER in any font or style it choses, including the particular font and style specified in the registration.
The marks TRADER and TRADER SPORTS are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. Additionally, where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
TRADER BAY– U.S. Trademark Reg. No. 3607740
The applied-for mark TRADER is confusingly similar to the registered marks TRADER BAY, which weighs in favor of a likelihood of confusion
Marks, as previously discussed, 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).
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., 901 F.3d 1367, 1373, 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 applied-for mark TRADER is similar to the registered mark TRADER BAY because they both begin with the identical word TRADER. The applied-for mark omits the word BAY in the registered mark, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark in this case does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
The omission of BAY from the applied-for mark also fails to significantly distinguish it from the registered mark, because the word TRADER is the dominant portion of the registered mark. The word TRADER is the dominant portion of the registered mark because it is the first word in the registered mark. 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”).
The marks TRADER and TRADER BAY are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. Additionally, where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
TRADERPLUS – U.S. Trademark Reg. No. 5462547
The applied-for mark TRADER is confusingly similar to the registered marks TRADERPLUS, which weighs in favor of a likelihood of confusion
Marks, as previously discussed, 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).
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., 901 F.3d 1367, 1373, 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 applied-for mark TRADER is similar to the registered mark TRADERPLUS because they both begin with the identical word TRADER. The applied-for mark omits the word PLUS in the registered mark, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark in this case does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
The omission of PLUS from the applied-for mark also fails to significantly distinguish it from the registered mark, because the word TRADER is the dominant portion of the registered mark. The word TRADER is the dominant portion of the registered mark because it is the first word in the registered mark. 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”).
The word TRADER is also the dominant portion of the registered mark because the word PLUS merely describes registrant’s goods and services. Marks are compared in their entireties, however 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). Matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
The attached entries from the American Heritage dictionary show that the word “plus” means “plus-size”, which in-turn means “relating to or being an extra large or oversize clothing size, especially one for women’s clothing.” Registrant’s goods are clothing, namely “tutus”, and retail services featuring women’s clothing, namely “On-line retail store services featuring women's clothing”, which presumably encompass clothing of all sizes, including “extra large or oversize clothing.” The word PLUS in the registered mark therefore merely describes a characteristic of registrant’s goods and services, and is less significant to the mark’s overall commercial impression than the word TRADER.
The marks TRADER and TRADERPLUS are similar, and consumers who encounter the marks used in connection with similar or related goods and services are likely to be confused as to the source of those goods services. Additionally, where the goods and services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Relatedness of the Goods and Services
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing in International Class 35 are related to registrants’ various goods and services in the same classes, which weighs in favor of a likelihood of confusion. The relatedness of applicant’s goods and services to the goods and services in each of the registrations is addressed in the subsections below.
TRADER SPORTS – U.S. Trademark Reg. No. 1242913
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing in International Class 35 are related to registrant’s “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets”, which weighs in favor of a likelihood of confusion.
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). 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’s “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” are related to registrant’s “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets” because they are all clothing goods. 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).
Applicant’s “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” because of the way these goods are marketed and sold. The previously attached evidence from GAP.com, JCrew.com, and HM.com shows that clothing goods of various types, including the types describes in the application and registration, are commonly marketed from the same sources, under the same brands or marks. The GAP, for example, markets and sells both “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” and “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets”, all under the GAP brand name.
Applicant’s “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” are similarly related to registrant’s “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets”, because of the way these goods and services are marketed and sold. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
The previously attached evidence from GAP.com, JCrew.com, and HM.com shows that “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” and are offered from the same sources, under the same brands or marks, as “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets.” The GAP, for example, markets and sells both clothing and “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets”, from its physical and online retail stores. The GAP also provides consumer information about these goods, and gift services pertaining to the goods as well.
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing goods in International Class 35 is, in light of the foregoing, related to registrant’s “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets” for likelihood of confusion purposes.
TRADER BAY – U.S. Trademark Reg. No. 3607740
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing in International Class 35 are related to registrant’s “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts”, which weighs in favor of a likelihood of confusion.
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). 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’s “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” are related to registrant’s “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts” because they are all clothing goods. 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).
Applicant’s “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” are related to registrant’s “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts” because of the way these goods are marketed and sold. The previously attached evidence from GAP.com, JCrew.com, and HM.com shows that clothing goods of various types, including the types describes in the application and registration, are commonly marketed from the same sources, under the same brands or marks. The GAP, for example, markets and sells both “clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” and “shirts, tops, athletic wear and workout gear, namely, shorts”, all under the GAP brand name.
Applicant’s “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” are similarly related to registrant’s “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts”, because of the way these goods and services are marketed and sold. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
The previously attached evidence from GAP.com, JCrew.com, and HM.com shows that “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” and are offered from the same sources, under the same brands or marks, as “Outerwear for Men, Women and Children-Namely, Shirts, Pants and Jackets.” The GAP, for example, markets and sells clothing of various types, including “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts”, from its physical and online retail stores. The GAP also provides consumer information about these goods, and gift services pertaining to the goods as well.
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing goods in International Class 35 is, in light of the foregoing, related to registrant’s “Clothing, namely, shirts, tops, athletic wear and workout gear, namely, shorts” for likelihood of confusion purposes.
TRADERPLUS – U.S. Trademark Reg. No. 5462547
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing goods in International Class 35 are related to registrant’s “tutus” in International Class 25, and “On-line retail store services featuring women's clothing” in International Class 35, which weighs in favor of a likelihood of confusion.
The goods and 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). Goods and 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).
Applicant’s “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” are related to registrant’s “tutus” because they are all clothing goods. 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).
Applicant’s “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” are also related to registrant’s “tutus” because of the way these goods are marketed and sold. The previously attached evidence from GAP.com, JCrew.com, and HM.com shows that clothing goods of various types, including the types describes in the application and registration, are commonly marketed from the same sources, under the same brands or marks. The GAP, for example, markets and sells both “tops and bottoms; outerwear, namely, coats, ties, hats, gloves, scarves; clothing accessories; belts; men's apparel” and “tutus”, all under the GAP brand name.
Applicant’s “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” is similarly related to registrant’s “tutus”, because of the way these goods and services are marketed and sold. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
The previously attached evidence from GAP.com, JCrew.com, and HM.com shows that “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; providing gift services; providing information online and by telephone about products and services featured in the retail and online stores” both feature “tutus”, and are offered from the same sources, under the same brands or marks, as “tutus.” The GAP, for example, markets and sells clothing, including tutus, from both its physical and online retail stores. The GAP also provides consumer information about these goods, and gift services pertaining to the goods as well.
Applicant’s clothing goods in International Class 25 and retail store services featuring clothing goods in International Class 35 is, in light of the foregoing, related to registrant’s “tutus” in International Class 25, and “On-line retail store services featuring women's clothing” in International Class 35 for likelihood of confusion purposes.
Applicant’s Arguments
The applicant argues that the three registered marks having coexisted with the shared term shows “that the public has come to recognize the shared term as a common word, and that consumers are successfully able to differentiate among the several marks using that common word.” This argument does not make the argument that the applied-for mark is not confusingly similar to the registered marks. Each of the registered marks have distinctive elements, whether it be additional wording or design, whereas the applied-for mark is in standard character form and is solely comprised of the “common word” TRADER. Thus, by the applicant’s own acknowledgement that it is a “common word”, when it is used in relation to the applied-for goods, it may be confusingly similar to any of the registered marks.
Additionally, applicant argues that the “applicant’s own prior registration also weighs against the Examiner’s conditional Section 2(d) refusal here, as it has co-existed with the allegedly blocking registration for some period of time.” The applicant has not claimed a prior-registration in the application, nor noted a registration number. The Examining Attorney cannot determine to which prior registration the applicant is referring to.
As to the registered marks themselves, Applicant argues that the design elements and additional elements in the registered marks make them distinctive from the applied-for mark. However, as previously noted, the applied-for mark is both in standard character form and can be displayed in any stylization, including identically to the registered marks, and the applied-for mark is entirely encompassed by the registered marks. 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.
Finally, Applicant has submitted a list of registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).
The applied-for mark TRADER is confusingly similar to the registered marks TRADER SPORTS, TRADER BAY, and TRADER PLUS, when the marks are considered in their entireties, despite additional wording in the registered marks, and character stylization in one of the registered marks. Applicant’s goods and services are also related to the goods and services identified in the registrations. Registration for the applied-for mark is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the marks in U.S. Registration Nos. 1242913, 3607740, and 5462547.
SECTION 2(e)(1) FINAL REFUSAL – MERELY DESCRIPTIVE
The Mark
The applied-for mark is TRADER, in standard characters, for “Clothing, namely, tops and bottoms; Outerwear, namely, jackets, coats, hats, gloves, and scarves; Belts; Men's apparel, namely, shirts, trousers, shorts, t-shirts; Swimwear; Bandanas; Ties as clothing; Bow Ties” in International Class 25 and “Retail store services and online retail services in the fields of clothing, clothing accessories, personal care products, toiletries, leather goods, shoes, bags, sunglasses, jewelry, candles, and gift items; Providing gift services in the nature of gift registry services; Providing consumer product information online and by telephone for all of the aforementioned products and services featured in the retail and online stores” in International Class 35.
Merely Descriptive Analysis
The applied-for mark TRADER merely describes a characteristic of applicant’s services, namely, that they are provided by a trader. Terms that describe the provider of a product or service may also be merely descriptive of the product and service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
The previously attached entry from the American Heritage dictionary shows that a “trader” is “one who trades; a dealer”, and that “trade” is “the business of buying and selling commodities, products, or services; commerce.” A trader is thus one who engages in the business of buying and selling commodities, products, or services. Applicant is a limited liability company with a verified “bona fide intention to use the [applied-for] mark in commerce on or in connection with the goods/services in the application.” Applicant is therefore a trader, and thus the word TRADER in the applied-for mark merely describes a characteristic of applicant’s goods and services, i.e. that they are provided by a trader.
The third party registrations attached to this final action all are in the clothing/retail field and show descriptive treatment of “TRADER.”
Applicant’s Arguments
The applicant has argued that the evidence attached to the first Office action is insufficient, asserting that: “that TRADER may carry multiple meanings requires the consumer to go through a multistage reasoning process and to use ‘imagination, thought and perception’ to divine the particular significance of the usage here.” However, Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
Conclusion
The applied-for mark TRADER merely describes a characteristic of applicant’s goods and services. Registration of the applied-for mark on the Principal Register is therefore refused under Section 2(e)(1) of the Trademark Act.
Advisory – Section 2(f)
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
Advisory - Supplemental Register not Available
RESPONSE GUIDELINES
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.
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).
Taylor Singer
/Taylor Singer/
Examining Attorney
Law Office 126
(571)270-3964
taylor.singer1@uspto.gov
RESPONSE GUIDANCE
