To: | URBN Products inc. (uspto@trademarks411.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88212702 - LXVE - N/A |
Sent: | 2/20/2019 3:02:49 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88212702
MARK: LXVE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: URBN Products inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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
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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5680098. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or 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). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant applied to register the mark LXVE for clothing; t-shirts; vests; tank tops; hooded sweatshirts; jackets and jumpers; jumpers; shorts; trousers; tracksuits; tracksuit pants; underwear; gloves; footwear; socks; shoes; training shoes; track shoes; boots; sandals; flip flops; head wear; sweatbands; headbands; hats; caps; beanie hats; body building clothing; t-shirts; vests; tank tops; hooded sweatshirts; jackets and jumpers; jumpers; shorts; trousers; tracksuits; underwear; gloves; gym clothing; gym t-shirts; gym vests; gym tank tops; gym hooded sweatshirts jackets and jumpers; gym jumpers; gym shorts; gym trousers; gym tracksuits; gym underwear; lifting fitness and gym accessory clothing; body building and weightlifting clothing straps; shorts; trousers; tracksuits; tracksuit pants; jogging shorts; jogging trousers; wristbands; sweatbands; headbands; underwear; socks; gloves; clothing in the nature of base layers; compression wear clothing; namely; compression socks; sleeves; tights.
The registered mark is LXVEMORE for Baseball caps; Baseball caps and hats; Bomber jackets; Briefs; Briefs as underwear; Dress pants; Dress shirts; Dress suits; Jeans; Polo shirts; Rompers; Shoes; Sneakers; Sweat pants; Sweaters; T-shirts; Tank-tops; Tank tops; Top coats; Top hats; Underwear; Underwear, namely, boy shorts; Windbreakers; Basketball sneakers; Bath slippers; Beanies; Body shirts; Boxer briefs; Bucket hats; Clothing, namely, khakis; Coats; Crew neck sweaters; Denim jeans; Denim jackets; Disposable underwear; Evening dresses; Fabric belts; Fishermen's jackets; Fitted swimming costumes with bra cups; Fleece jackets; Fleece shorts; Fur coats; Fur jackets; Graphic T-shirts; Heavy jackets; Jogging pants; Ladies' underwear; Leather shoes; Leather pants; Long underwear; Long jackets; Men's dress socks; Men's underwear; Men's socks; Men's suits; Military boots; Panties, shorts and briefs; Short-sleeved or long-sleeved t-shirts; Sports jerseys and breeches for sports; Sports pants; Sweat-absorbent underwear; Thermal underwear; Thong underwear; V-neck sweaters; Wetsuits. The marks are very similar.
Comparison of Goods
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
The goods of the parties are closely related: both include clothing items, including underwear, t-shirts, jackets and caps, which can be used and/or sold together. The examining attorney must consider any goods in the registrant’s normal fields of expansion to determine whether the registrant’s goods are related to the applicant’s identified goods under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). TMEP §1207.01(a)(v).
In this case, since the applicant and the registrant have the similar marks, customers are likely to be confused and believe that the applicant’s goods emanate from the same source as the registrant’s goods. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988). TMEP §§1207.01(d)(i).
Informalities
Classification and Identification of Goods
The identification of goods is indefinite and must be clarified because some of the wording is too vague. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition, Applicant has classified some of the goods incorrectly. See below for specific suggestions.
The bold capitalized wording represents the examining attorney’s suggested changes. The brackets are used to highlight the indefinite wording and to provide a brief explanation of the issue.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Applicant may adopt the following identification, if accurate:
Class 10: COMPRESSION GARMENTS; COMPRESSION SOCKS
Class 25: Clothing, NAMELY, [specify common commercial names of the clothing item]; t-shirts; vests; tank tops; hooded sweatshirts; jackets and jumpers; jumpers; shorts; trousers; tracksuits; tracksuit pants; underwear; gloves; footwear; socks; shoes; training shoes; track shoes; boots; sandals; flip flops; headwear; sweatbands; headbands; hats; caps; beanie hats; body building clothing, NAMELY, [specify the common commercial names of the “clothing”]; [t-shirts; vests; tank tops; hooded sweatshirts; jackets and jumpers; jumpers; shorts; trousers; tracksuits; underwear; gloves – this is all repetitive]; gym clothing, NAMELY, [specify]; gym t-shirts; gym vests; gym tank tops; gym hooded sweatshirts jackets and jumpers; gym jumpers; gym shorts; gym trousers; gym tracksuits; gym underwear; lifting fitness and gym accessory clothing, NAMELY, [specify the common commercial names of the “clothing”]; body building and weightlifting clothing straps; [“shorts; trousers; tracksuits; tracksuit pants” - repetitive]; jogging shorts; jogging trousers; wristbands; [“sweatbands; headbands; underwear” - repetitive]; socks; [“gloves” – repetitive]; clothing in the nature of base layers; tights; PADDED ELBOW COMPRESSION SLEEVES SOLD AS AN INTEGRAL COMPONENT OF ATHLETIC CLOTHING, NAMELY, {specify clothing item, e.g., jersey, uniform, etc.}
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Meaning of Wording
/Kevon L. Chisolm/
Trademark Examining Attorney
Law Office 103
571-272-9270
kevon.chisolm@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.