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: 2/20/2019

 

THIS IS A FINAL ACTION.

 

Introduction

 

In a previous Office action dated December 28, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following:  Refusal under Trademark Act Section 2(d): Likelihood of Confusion.  In addition, applicant was required to satisfy the following requirements: Amend Mark Description; Disclaim the wording “GROUP”; and Explain the significance of the wording “COTAILOR”.

                                                                                                                

Based on applicant’s response filed on January 14, 2019, the following requirements have been satisfied: Amended the mark description; disclaimed the wording “GROUP” and explained that the wording “COTAILOR” has no significance or meaning in the relevant industry.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal 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:

 

1. Refusal under Trademark Act Section 2(d): Likelihood of Confusion – FINAL

 

Refusal under Trademark Act Section 2(d): Likelihood of Confusion – FINAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5080637.  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 so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Applicant’s mark is COTAILOR GROUP (plus design) for “on-line retail store services featuring uniforms, clothing, headwear, business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses, footwear, chef´s coats, chef´s hats, work shoes and boots; retail clothing boutiques; retail clothing stores; retail stores featuring uniforms, headwear, business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses, footwear, chef´s coats, chef´s hats, work shoes and boots” in International Class 035. 

 

Registrant’s mark is COTAIL (standard characters) (Reg. No. 5080637) for “hats; pants; t-shirts” in International Class 025.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the initial Office Action issued on December 28, 2018, the trademark examining attorney noted that the marks are highly similar where the marks begin with the term “COTAIL” and the applicant’s addition of the letters “OR” at the end does not significantly alter the appearance, sound, meaning, or commercial impression of the shared term.  The trademark examining attorney also noted that the applicant’s addition of the generic wording GROUP or its addition of a design element did not obviate the similarity between the marks. 

 

In the applicant’s Response to Office Action filed on January 14, 2019, the applicant argued that the marks are distinguishable, because the shared term “COTAIL” is “so integrated into Applicant’s Mark that it loses its individual identify therein” (see Response at 3).  Moreover, the applicant argued that the applicant’s mark “contains the word “TAILOR” which consumers would immediately recognize, given its relevance to apparel … which the cited mark suggests “coat tail”, given [its] pronunciation and appearance” (see Response at 4).  Applicant also argued that the additional work “GROUP” and the design “further distinguishes [the applied-for mark] from the cited mark.”  Id. 

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

First, as previously noted in the initial Office Action issued on December 28, 2018, the literal portion of the applicant’s mark, COTAILOR GROUP, is highly similar to registrant’s mark, COTAIL, where the marks begin with the term “COTAIL” and the applicant’s addition of the “OR” at the end of the shared wording does not significantly alter the appearance, sound, meaning, or commercial impression of the shared term.  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”).

 

Moreover, the relevant marks are highly similar in that they share the wording “COTAIL.”  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).  Please see the attached evidence showing that the applied-for mark and the cited registration do not have a dictionary definition.  

 

The applicant relies on an opposition proceeding, J. P. Stevens & Co. v. Farbenfabriken Bayer Aktiengesellschaft, 1960 TTAB LEXIS 50, 124 U.S.P.Q. (BNA) 432 (Trademark Trial & App. Bd. February 23, 1960), and a non-precedential case, In re Masco Corp., 2007 TTAB LEXIS 596 (Trademark Trial & App. Bd. May 24, 2007) to argue that the shared wording “COTAIL” loses its individual identity therein (see Response at 4).  However, the mark analysis in the present case significantly differs from the analyses above for the following reasons:

 

J. P. Stevens & Co. v. Farbenfabriken Bayer Aktiengesellschaft, 1960 TTAB LEXIS 50, 124 U.S.P.Q. (BNA) 432 (Trademark Trial & App. Bd. February 23, 1960)

 

The Board noted that the applicant’s mark “CUPRAMA” is a coined and unitary expression and that the opposer’s mark “RAMA” was included in the applicant’s mark incidentally.  Moreover, the addition of the arbitrary word “CUP” further distinguished the appearance, sound, meaning, and commercial impression of the applicant’s mark (see attached dictionary definition of CUP).  In contrast, in the present case, the shared term “COTAIL” is not merely incidental in the applied-for mark where it comprises the first two syllables of the applied-for mark and the addition of the letters “OR” does not significantly alter the appearance, sound, meaning, or commercial impression.

 

In re Masco Corp., 2007 TTAB LEXIS 596 (Trademark Trial & App. Bd. May 24, 2007)

 

Although the relevant marks in this case, “TREVI” and “TREVISO”, shared the wording “TREVI,” the Board noted that the relevant public would understand the wording “TREVI” as the name of the famous fountain located in Rome while they would understand the wording “TREVISO” as the name of an obscure town in Italy.  In contrast, in the present case, the cited mark “COTAIL” or the first wording and the most prominent wording of the applied-for mark “COTAILOR” does not have any meaning (see attached evidence). 

 

Second, the applicant’s addition of the descriptive or generic wording “GROUP” does not obviate the similarity between the marks (see applicant’s disclaimer statement, disclaiming exclusive rights to GROUP apart from the mark as shown).  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 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 and/or services 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).

 

Third, the applicant’s addition of the design element does not obviate the similarity between the marks.  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)).

 

Based on the foregoing, the marks are confusingly similar in nature.

 

Comparison of the Goods and Services

 

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).

 

In the initial Office Action, the examining attorney found the applicant’s services to be closely related to the registrant’s goods where an entity that provides retail store services and online retail store services featuring clothing goods, like the applicant, also routinely provides hats and t-shirts, like the registrant, under the same mark.  To this point, the trademark examining attorney previous attached website screen-shots from BANANA REPUBLIC, ANN TAYLOR, and ANTHROPOLOGIE, establishing that the same entity provides the relevant goods and/or services and markets the goods and/or services under the same mark.

 

In the applicant’s Response to Office Action filed on January 14, 2019, the applicant does not contest or address the finding.

 

As previously noted in the December 28, 2018 Office Action, the applicant’s services are closely related to the registrant’s goods where an entity that provides retail store services and online retail store services featuring clothing goods, like the applicant, also routinely provides hats, pants, and t-shirts, like the registrant, under the same mark.

 

The Internet evidence attached to the previous Office Action comprised of screen-shots from BANANA REPUBLIC, ANN TAYLOR, and ANTHROPOLOGIE and it established that the same entity commonly provides the relevant goods.  The additional Internet evidence attached to this Office Action, consisting of screen-shots from DICKIES, GAP, CARHARTT, L.L.BEAN, and REI further establishes that the same entity commonly provides the relevant goods under the same mark.  Thus, the 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).

 

In conclusion, the marks are similar in nature and the evidence shows that the goods are commercially related and likely to be encountered together in the marketplace by consumers.  Therefore, consumers are likely to be confused and mistakenly believe that the goods originate from a common source.  Therefore, registration must be refused under Section 2(d) of the Lanham Act.

 

Response Guidelines

 

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.  

 

 

 

/In Pyo Lee/

In Pyo Lee

Examining Attorney

Law Office 114

(571) 270 – 3623

inpyo.lee@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/20/2019 FOR U.S. APPLICATION SERIAL NO. 88164620

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.