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: November 01, 2019

 

This Office action is in response to applicant’s communication filed on September 29^th, 2019. An Office Action was issued on March 29, 2019 because a disclaimer statement was required, a confusingly similar registered mark was identified for class 25 and the identification of goods required amendments for Class 25.

 

The following requirements have been satisfied: the disclaimer statement and the identification of goods amendments for Class 25. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.

 

The Applicant failed to address the confusingly similar registered mark for Class 25. Therefore, this issue is continued, maintained, and now made FINAL.

 

Summary of Issues:

• Section 2(d)-Confusingly Similar Registered Mark- Limited to Class 25

 

 

 

 

 

 

SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION:- CL 25

 

Registration of the applied-for mark is refused for class 25 because of a likelihood of confusion with the mark in U.S. Registration No. 4797143 and Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

 

Applicant did not submit any arguments in response to the Section 2(d) refusal, therefore, this is CONTINUED and MAINTAINED.

 

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 and/or services of the applicant and registrant(s). 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.

 

SIMILARITY OF THE MARKS:

 

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 Davia , 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc. , 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd. , 8 USPQ2d 1534, 1535 (TTAB 1988)); 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.” In re U.S. Warriors Ice Hockey Program, Inc. , 122 USPQ2d 1790, 1795 (TTAB 2017) (citing 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 Bay State Brewing Co. , 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc. , 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam , 972 F.2d 1353 (Fed. Cir. 1992)); TMEP §1207.01(b).

 

In the present case, applicant’s mark is “LAS VEGAS STING” and registrant’s mark is “STING”.

 

Although applicant’s mark features the additional wording “LAS VEGAS”, this wording is merely geographically descriptive of the applied for goods and services and must be disclaimed. See the disclaimer section below. 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).

 

The dominant portion of both marks is “STING” because “LAS VEGAS” must be disclaimed. Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp. , 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc. , 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are virtually identical in part for the wording STING. Although the applied-for mark includes the wording “LAS VEGAS”, the mark still maintains the same commercial impression as the registered marks, namely, STING.

 

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).

 

In sum, given the highly similar appearance, meaning, connotation, and commercial impression of the registered and applied-for marks it follows that consumers will confuse the marks.

 

Therefore, the marks are confusingly similar.

 

RELATEDNESS OF GOODS:

 

The goods and/or 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).

 

The compared goods and/or 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).

 

The applicant’s goods for class 025 are “Men's, women's and children's clothing, namely, player uniforms, namely, footwear, jersey tops and pants; cheerleader uniforms; replica uniform shirts, coaches' caps being headwear, wool hats, painters' caps being headwear, baseball caps, visors being headwear, headbands, belts, t- shirts, tank tops, golf shirts, sweaters, sweatshirts, leather jackets, neckties, coats, shorts, sweatpants, pants, socks and underwear”.

 

The registrant’s goods for class 025 are also “ Apparel, namely, t-shirts, shorts, underwear, gloves; athletic apparel, namely, shirts, pants, jackets; footwear ; headwear; hats and caps ; headbands; boxing shoes, boxing shorts, sports shoes; clothing, namely, base layers, tops, bottoms, shirts, cowls, drawers, halter tops; clothing, namely, arm warmers; articles of water-resistant clothing, namely, jackets, pants and footwear; articles of waterproof clothing, namely, jackets, pants, rainwear and footwear; articles of windproof clothing, namely, windsuits, wind coats, wind pants, wind shirts and wind vests; athletic clothing, namely, athletic uniforms; beach clothing, namely, beachwear; belts ; clothing for surfing, namely, surfwear; casual clothing, namely, loungewear and leisure suits; clothing for infants, namely, infantwear and infants' one piece clothing; clothing for swimming, namely, bathing suits and swimwear; clothing for sports, namely, tennis wear, skiwear; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material, namely, light-reflecting coats and jackets; thermal clothing, namely, thermal underwear and socks; cyclists' clothing, namely, jerseys and shorts; clothing for cycling, namely, shorts, cycling knicks in the nature of shorts, bibs in the nature of bib shorts, bib tights and bibs not of paper, socks, gloves, footwear, shoes, jackets, overshoes, hats and caps, mitts in the nature of gloves, jerseys, base layers, arm and leg warmers, tights and trousers, gilets and vests; clothing for martial arts, namely, uniforms, shorts, shirts, t-shirts, base layers, rash vests, gis, gi tops, gi bottoms, socks, shoes, hats, caps, pants, trousers; denim pants and jackets; ear muffs; gloves; jump suits; ladies' clothing, namely, nightwear, sleepwear, underwear, bras, lingerie; mittens; money belts; motorcyclists' clothing, namely, motorcycle jackets, boots, gloves and rain suits; play suits; ski gloves; thongs; wraps; wristbands; boots for sports; sports caps; sports footwear; sports headwear; sports hosiery; sports socks; studs for sports footwear; wrist bands for use in playing sports”.

 

The goods are both various types of clothing. They are the same types of goods as shown in the bold words above and therefore travel in the same trade channels.

 

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).

 

Thus, applicant 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 summary, the registered mark and the applied-for mark create the same commercial impression and the goods are likely to be encountered together in the marketplace by the same consumers. Thus, consumers are likely to make the mistaken conclusion that the goods originate from the same source. Therefore, a likelihood of confusion exists and registration is refused under Trademark Act Section 2(d).

 

Although applicant’s mark has been refused registration for class 025, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION:  If applicant does not respond to this Office action within the six-month period for response, International Class 25 will be deleted from the application. 

 

In such case, the application will then proceed only with the following services in International Class 41.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

 

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.  

 

CONTACT INFORMATION: If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

Chaffin, Alexandra

/Alexandra K. Chaffin/

Alexandra K. Chaffin

Law Office 126

(571).270.3077

Alexandra.Chaffin@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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 01, 2019 for

U.S. Trademark Application Serial No. 88250028

 

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. 

 

 

Chaffin, Alexandra

/Alexandra K. Chaffin/

Alexandra K. Chaffin

Law Office 126

(571).270.3077

Alexandra.Chaffin@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 November 01, 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.”