Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 29, 2019

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 23, 2019.

 

In a previous Office action dated January 28, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: section 2(d) likelihood of confusion based on Registration Nos. 5526523, 0995891, and 1815610. The examining attorney also issued a prior-filed application advisory and required a disclaimer and for applicant to verify the accuracy of their citizenship. Based on applicant’s response, the prior-filed application advisory is withdrawn and the disclaimer and accuracy of applicant’s citizenship requirements are satisfied. Additionally, the section 2(d) likelihood of confusion refusals based on Registration Nos. 0995891 and 1815610 are also withdrawn. However, the examining attorney maintains and now makes FINAL the section 2(d) likelihood of confusion refusal based on Registration No. 5526523 in part for the reasons set forth herein. See TMEP §§713.02, 714.04. All arguments and evidence included in the January 28, 2019, Office Action are incorporated herein by reference.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion as to Class 025 ONLY

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

APPLIES TO CLASS 025 ONLY

 

Registration of the applied-for mark was refused and the refusal is herein maintained and made FINAL in part because of a likelihood of confusion with the marks in U.S. Registration No. 5526523. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 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). 

 

Standard of 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.  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.

 

That is, 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). Additionally, 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).

 

The applicant has applied to register the mark OAKLAND ROOTS with design for the following goods:

• “Cap visors; Footwear; Hats; Jackets; Pants; Shirts; Socks; Sports jerseys; Sweaters; Sweatpants; Sweatshirts; T-shirts” in class 025.

 

The cited mark is as follows:

• OAKLAND DEEPLY ROOTED (with design) in Registration No. 5526523 for “t-shirts.

 

Comparison of the Marks:

 

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 cited mark in Registration No. 5526523 is OAKLAND DEEPLY ROOTED with design. The applied for mark is OAKLAND ROOTS, also with design. Based on the wording OAKLAND and ROOT, and the combination thereof, shared in common, the compared marks convey the same overall meaning.

 

Consumer confusion has been held likely for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning.  See In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE CHAPEL for the same goods); TMEP §1207.01(b). Here, both ROOTS and ROOTED combined with the term OAKLAND engender a commercial impression of goods and services that are deeply connected to the Oakland area, and thus the marks are susceptible to the same overall meaning and are likely to engender the same connotation and commercial impression.

 

Further, the designs in the respective marks merely enhance the overall similarity of the marks. When comparing marks, 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).

 

In this case, applicant’s design consists of a tree with substantial roots below the literal element of the mark. The design in the registered mark consists of a tree with substantial roots within the O of “OAKLAND.” Applicant’s and registrant’s designs are very similar to each other, and would be described in a similar manner by consumers. Thus, the similar designs contribute to a likelihood of confusion. Moreover, both designs merely provide illustration for the literal element in the respective marks which, as noted above, convey the commercial impression of goods and services that are deeply connected to the Oakland area.

Applicant’s Arguments in Response

Applicant argues in response that there are many marks with the term “ROOTS’ for similar goods in the register and therefore the mark is dilute in part. They also argue that locations are overall weaker as descriptive wording. However, while both OAKLNAD and ROOT(S) may be somewhat descriptive and dilute, the similarity of these words alone and in isolation from each other is not the only factor upon which the similarity of the marks hangs. Rather, it is the combination off the two shared words with the design, and the overall commercial impression created by said combination, upon which the refusal is based. Although applicant offers many other marks with the terms ROOT(S) for similar goods, none also contain the wording OAKLAND, nor a similar image with a tree within a circle.  Thus, the third party marks are not persuasive and the descriptiveness and dilution of OAKLAND and ROOTS is weak evidence at best.

 

Applicant also argues that the difference between ROOTS and DEEPLY ROOTED creates “a very different commercial impression.”  However, applicant does not suggest what these different commercial impressions may be, nor refute the above argument from the original office Action that both ROOTS and ROOTED combined with the term OAKLAND engender a commercial impression of goods and services that are deeply connected to the Oakland area. Merely stating that the marks engender different commercial impressions without suggesting what these different commercial impressions may be does not convincingly rebut the argument that the marks are susceptible to the same overall meaning and are likely to engender the same connotation and commercial impression. Thus, this argument is also not persuasive.

 

In sum, the overall commercial impression of both of the marks concerned is similarly dominantly engendered by the combination of the wording OAKLAND and ROOT, and the resulting idea of a connection with Oakland. Thus, with a focus on the recollection of the average purchaser, the marks are sufficiently similar in commercial impression such that consumers who encounter the marks would be likely to assume a connection between the parties. Therefore, the marks are confusingly similar, especially given the identical in part nature of the goods.

 

Comparison of the Goods:

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Applicant has applied for various clothing items, including t-shirts, hats, pants, and sweaters and Registration No. 5526523 also covers t-shirts.

 

Because both applicant and registrant cover “t-shirts”, the applicant’s and registrant’s goods are identical in part.  Further, in general, the applicant's goods are considered related to the registrant's goods as items of clothing. Companies routinely produce and sell both t-shirts and many of the type of clothing applied for by applicant under the same mark. See attached evidence from Superdry, Madewell, J Crew, Express, Land’s End, Banana Republic, and Nike. Therefore, because the goods are similar and generally related as clothing, it is presumed that the channels of trade and class of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). 

Applicant’s Arguments in Response

Applicant argues that even when products fall under the same general category they may still operate in distinct niches and be found to not be related. However, applicant makes no arguments and provides no evidence to show why this would be the case here and that the goods covered by the marks are distinct or that they do in fact operate in different niches. Applicant presents no evidence showing that the two marks for identical goods would not be confused. Nor do they refute that the rest of the clothing covered by the registered mark is not related to t-shirts, or would actually operate in a separate niche. Indeed, as shown in the attached evidence above, the goods are identical in part and do not broadly operate in different niches. Thus, because applicant has provided no actual evidence to the contrary, applicant’s argument is not persuasive.

 

Thus, applicant’s and registrant’s goods are related for likelihood of confusion purposes.    

 

Conclusion:

 

The similarity between the applicant's mark and the registered mark, and the relatedness of the applicant's goods to the registrant’s goods, is so great as to create a likelihood of confusion. Thus, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5526523. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

 

FINAL REFUSAL – RESPONSE GUIDELINES

 

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).

 

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.  

 

 

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).

 

 

/Carolyn Detmer/

Carolyn Detmer

Trademark Examining Attorney

Law Office 127

(571) 272-2722

carolyn.detmer1@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 29, 2019 for

U.S. Trademark Application Serial No. 88172743

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Carolyn Detmer/

Carolyn Detmer

Trademark Examining Attorney

Law Office 127

(571) 272-2722

carolyn.detmer1@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 29, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”