To: | The Governor and Company of Adventurers ETC. (trademarks@loeb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88234768 - MOVA - 222725-00049 |
Sent: | 3/16/2019 12:58:18 PM |
Sent As: | ECOM126@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88234768
MARK: MOVA
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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: The Governor and Company of Adventurers ETC.
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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: 3/16/2019
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(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—PARTIAL REFUSAL AS TO CLASSES 25 AND 35
Applicant’s mark is “MOVA” (in standard character form) for, in relevant part, “clothing, headwear and footwear” in International Class 25 and “retail services; online retail services” In International Class 35.
Reg. No. 3641201’s mark is “MOVA” (in standard character form) for “clothing, namely, t-shirts, hats” in International Class 25.
Reg. No. 5608521’s mark is “MOVA” (in stylized form) for, in relevant part “On-line wholesale and retail store services featuring home and office furnishings, namely, globes, photo stands, display stands, rotating decorative plastic spheres, and ornamental plastic spheres; On-line wholesale and retail store services featuring self-powered action toys” in International Class 35.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks and the similarity of the goods.
SIMILARITY OF THE MARKS
Reg. No. 3641201
In the present case, applicant’s mark is “MOVA” and registrant’s mark is “MOVA”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Reg. No. 5608521
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)). In this case, the word portion of the marks are identical.
SIMILARITY OF THE GOODS
In this case, the application uses broad wording to describe “clothing, headwear and footwear” which presumably encompasses all goods of the type described, including Reg. No. 3641201’s more narrow “clothing, namely, t-shirts, hats.” The application also uses broad wording to describe “retail services; online retail services” which presumably encompasses all services of the type described, including Reg. No. 5608521’s more narrow “on-line wholesale and retail store services featuring home and office furnishings, namely, globes, photo stands, display stands, rotating decorative plastic spheres, and ornamental plastic spheres; on-line wholesale and retail store services featuring self-powered action toys.”
See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and Reg. No. 3641201’s good and Reg. No. 5608521’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and services are related.
IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT
The identification of goods and services is unacceptable because it includes indefinite and broad wording. TMEP §1402.01. The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).
The specific issues with the identification are noted below.
Class 9
The identification in Class 9 is unacceptable because the subject matter “art, cultural and historical events, music, travel educational topics of general interest” is unclear. Specifically, the wording “travel educational topics of general interest” is not clear because it cannot be determined whether this is intended to refer to travel-related educational topics, or whether this wording includes a typographical error and is instead intended to refer to two separate topics, travel and educational topics of general interest.
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
Class 18
“Bags” is unacceptable as indefinite. The applicant must list the specific type of bags, such as tote bags, sports bags, book bags, and the like. Please note that not all “bags” are properly classified in Class 18. For example, bags specially adapted for carrying items are generally classified according to the item they are designed to carry, and merchandise bags are in Class 16.
“Cosmetic and toiletry cases” is unacceptable because the applicant must specify that these goods are sold empty.
“Leather binders” is unacceptable as indefinite. The applicant must further clarify the type/use of the binders. Leather binders for travel purposes, or for a similar carrying use, are properly classified in Class 18. However, other binders are classified according to their use. For example, binders for holding CDs are in Class 9 and office binders are in Class16.
Class 25
The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The following are examples of acceptable identifications: “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25. Therefore, applicant must amend the identification to specify the type of clothing.
If applicant’s clothing is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Class 35
“Organizing art exhibitions that occur at different intervals throughout the year for commercial purposes” is unacceptable because the particular nature of the services is not clear, and these services may thus be misclassified. While the applicant has specified that the exhibitions are for “commercial purposes,” art exhibitions are otherwise generally classified in Class 41, as they are primarily artistic or creative in nature. Thus, for services in Class 35, the applicant must further specify the commercial nature of the services.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring [specify featured goods],” “retail distributorships in the field of [specify],” or “retail outlets featuring [specify featured goods].” See TMEP §§1301.01(a)(ii), 1402.11.
Class 41
“Conducting entertainment exhibitions in the nature of music, dance, food, coffee, wine pop-up experiences” is unacceptable because the nature of the services is not clear. While the identification specifies “entertainment exhibitions,” the wording “food, coffee, wine pop-up experiences” could identify services classified in other classes. For example, providing a pop-up featuring food, coffee, and wine is a service properly classified in Class 43. In addition, “entertainment exhibitions in the nature of music… dance” is unclear because it does not indicate a type of exhibition.
“Production of digital content in the fields of music, dance, food, beverage, and lifestyle” is unacceptable as indefinite. First, the applicant must specify the type of content, such as videos, films, audio recordings. In addition, the applicant must further clarify the subject matter of “food, beverage, and lifestyle,” as these fields are unclear. Please note that production of advertising material is properly classified in Class 35.
“Entertainment services in the nature of consumer marketing and experiential events, pop-up retail stores and consumer marketing activations, arts and cultural events, live concerts, public relations events, product launches” is unacceptable because the nature of the services is not clear, and this wording could identify services classified in other classes. Specifically, most marketing and promotional activities are properly classified in Class 35, even if they have features related to entertainment.
Class 42
This identification is acceptable as written.
Class 43
This identification is acceptable as written.
The applicant must amend the application to adopt an acceptable identification and classification of goods and services. The applicant may amend to adopt one or more of the following, if accurate (with changes bolded for clarity):
INTERNATIONAL CLASS 9: Visual, audio and video recordings featuring information in the fields of art, cultural and historical events, music, travel, and educational topics of general interest; mobile applications, namely, downloadable computer application software for mobile and smart phones, namely, downloadable interactive multimedia software featuring visual, audio and video information for users on the subjects of art, cultural and historical events, music, travel, and educational topics of general interest
INTERNATIONAL CLASS 16: Merchandise bags; plastic bags for packaging; leather binders for office use
INTERNATIONAL CLASS 18: Handbags, [specify type of bag properly classified in this class; e.g., duffel, sports, book] bags, backpacks, purses, luggage, luggage tags, cosmetic and toiletry cases sold empty, leather binders for travel purposes, credit card holders, briefcases, wallets, umbrellas, diaper bags, baby carriers worn on the body, reusable shopping bags, leashes and collars for animals, pet apparel
INTERNATIONAL CLASS 25: Clothing, namely, [list specific articles of clothing properly classified in this class; e.g., pants, shirts, sweaters, dresses]; headwear; footwear.
INTERNATIONAL CLASS 35: Retail pop-up shops featuring food, drinks, clothing, household products, and garments; organization of events, exhibitions, and shows for commercial, promotional and advertising purposes; Organizing trade show exhibitions in the field of art that occur at different intervals throughout the year; Retail store services and online retail store services featuring [indicate items featured; e.g., clothing, handbags, fashion accessories]; promotional services, namely, arranging and conducting marketing promotional events for others in the nature of pop-up retail stores and special public relations or product launch events that also feature art, cultural activities, food, and entertainment
INTERNATIONAL CLASS 41: Conducting entertainment exhibitions in the nature of pop-up experiences featuring music and theater performances, lectures, dance performances, and also providing food, coffee, and wine; Entertainment services in the nature of production of [specify type/manner of content; e.g., multimedia entertainment content, audio and video recordings] featuring music, dance, and information about food, beverages, and diverse lifestyles; Arranging and conducting special events for social entertainment purposes; Entertainment services, namely, providing pop-up experiential art installations and art spaces in which users can interact for recreational, leisure, or entertainment purposes and create digital content to share on social media platforms; Entertainment services in the nature of organizing social entertainment events; entertainment services in the nature of presenting live musical performances, live performances by a DJ and live dance performances; entertainment services, namely, conducting parties; entertainment services in the nature of organizing and conducting arts and cultural events and live concerts; organizing cultural and arts events; providing pop-up studios for creating photography and editorial imagery; organizing and conducting art exhibitions that occur at different intervals throughout the year
INTERNATIONAL CLASS 42: Special event styling services; retail design services, namely, planning and layout design services for temporary pop-up events; visual design, namely, designing audio-visual creative works.
INTERNATIONAL CLASS 43: Services for providing food and drink; restaurant services; bar services; providing social meeting and social function facilities for special events for social entertainment purposes; providing pop-up bar and restaurant services featuring food, wine, and coffee.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple Class Application
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods that may be classified in at least eight (8) classes; however, applicant submitted a fee sufficient for only seven (7) classes. 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)/44(e) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
SIGNIFICANCE INQUIRY
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording in the mark “MOVA” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language.
(3) Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.
The format for an English translation and transliteration: “The English translation of “MOVA” is “MOVE”.
The format for when there is no English translation or meaning of the transliteration: “The wording “MOVA” has no meaning in a foreign language.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
ADVISORY—INTENT TO PERFECT
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
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.
Taylor Singer
/Taylor Singer/
Examining Attorney
Law Office 126
(571)270-3964
taylor.singer1@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.