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: 4/1/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Section 2(d) – Likelihood of Confusion
• Prior-Filed Application
• Identification of Goods and Services
• Clear Mark Description Required
• Advisory: Attorney Address

 

 

Registration Refused – Section 2(d) Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4289085 and 5483320.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations (“Exhibit A”).

 

The applied-for mark is “EXP” with design for “Clothing, namely, shirts, t-shirts, outerwear, sweatshirts” in International Class 25 and “Retail store and on-line retail store services featuring clothing” in International Class 35.

 

The registered mark in U.S. Registration No. 4289085 is “EXP” in standard characters for “Computerized on-line ordering services in the field of furniture, home decor, cushion covers, wall decor, vases, rugs and candles; On-line retail store services featuring furniture, home decor, cushion covers, wall decor, vases, rugs and candles; On-line wholesale store services featuring a wide variety of consumer goods, including furniture, home decor, cushion covers, wall decor, vases, rugs and candles; Wholesale ordering services in the field of a wide variety of consumer goods, including furniture, home decor, cushion covers, wall decor, vases, rugs and candles” in International Class 35. The applicant should note that this registration is in its grace period for filing the §8 or §71 affidavit or §9 renewal application.

 

The registered mark in U.S. Registration No. 5483320 is “EXP EXPOSURE PROJECT” with design for, inter alia, “Winter wear for sports, namely, snow pants, snowmobile suits, jackets, sports gloves in the nature of snowmobiling gloves, toques, and snow boots” in International Class 25.

 

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

 

Comparison of 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); 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); TMEP §1207.01(b).

 

U.S. Registration No. 4289085

In this instance, the applied-for mark is “EXP” and the registered mark is “EXP”. This wording is identical in 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 the wording is 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 services.  Id.

 

The inclusion of a design in the applied-for mark 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 services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); 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.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911.

 

Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.

 

U.S. Registration No. 5483320

In this instance, the registered mark “EXP EXPOSURE PROJECT” encompasses the entirety of the applied-for mark “EXP”. Incorporating the entirety of one mark within another 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 LANCER and design and BENGAL confusingly similarTMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The inclusion of “EXPOSURE PROJECT” in the registered mark does not obviate the likelihood of confusion between the marks. Consumers are generally more inclined to focus on the first word 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”). The first term in each of the marks is the shared term “EXP”.

 

Therefore, based on the foregoing, the applied-for and registered marks are sufficiently similar to find a likelihood of confusion.

 

Comparison of Goods and Services

The compared goods and 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); TMEP §1207.01(a)(i).  Instead, the respective goods and services 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 services] emanate from the same source.”  7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007); TMEP §1207.01(a)(i).

 

The determination of likelihood of confusion is based on the description of the goods and services 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).  Broad and unrestricted identifications are presumed to encompass all goods and services of the type described. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018).

 

Here, the applicant and registrant in U.S. Registration No. 4289085 use broad wording to describe their goods and services. For example, the applicant’s goods include “outwear” and its retail and online retail store services feature “clothing”. This wording is presume to encompass all goods of the type described and, thus, the applicant’s goods and retail store services encompass the winter sportswear in U.S. Registration No. 5483320. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); TMEP §1207.01(a)(ii).

 

Similarly, the registrant in U.S. Registration No. 4289085 indicates its wholesale store services featuring a wide variety of consumer goods, which would include the goods set forth in the applicant’s more narrow identification, clothing. In addition, the goods and 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).

 

Furthermore, the goods and services at issue are related because the goods and services commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from manufacturers and retailers of clothing (“Exhibit B”). This evidence establishes that the same entity commonly manufactures a variety of clothing and provides retail and online retail store services featuring these goods under the same mark, which are marketed and provided through the same trade channels.  For example, Columbia® produces t-shirts, winter boots and gloves, and jackets and coats under its mark and markets and sells these goods on its online retail store services.

 

Therefore, the goods and services of the applicant and registrants are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).

 

Conclusion

Because the applicant’s applied-for mark and the registered marks are similar and the goods and services are related, registration is refused for a likelihood of confusion under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

Prior-Filed Application

The filing date of pending U.S. Application Serial No. 87268141 precedes applicant’s filing date.  See attached referenced application (“Exhibit C”).  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues. However, the applicant must address the other issues raised in this Office action.

 

 

Identification of Goods and Services

The wording “outerwear” in the identification of goods is indefinite and must be clarified because the applicant does not specify the clothing items by their common commercial or generic name.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, this wording could encompass a number of goods, such as jackets, coats, hats, and gloves. Therefore, where indicated, the applicant must revise this entry to clarify the common commercial or generic name of its outerwear.

 

Applicant may adopt the following identification of goods and services, if accurate. The examining attorney has bolded and underlined additions to the applicant’s original identification of goods and services.

 

Class 025:       Clothing, namely, shirts, t-shirts, outerwear in the nature of jackets, and sweatshirts

 

Class 035:       Retail store and on-line retail store services featuring clothing

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

 

Clear Mark Description Required

Applicant must submit an amended description of the mark because the current one uses vague, unclear language that does not accurately describe the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  In particular, the indication that the “X” is formed with two parallel lines is unclear as each segment of the “X” is comprised of two parallel lines; however, the lines are only parallel in part. As such, the mark description does not clearly describe the nature of the mark.

 

Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. The following description is suggested, if accurate:  The mark consists of the stylized letters “EXP” with the “X” comprised of two lines that form a semi-circle design around the letters “E” and “P”.

 

 

Advisory: Attorney Address

Applicant’s documentation filed on January 8, 2019 was signed by an attorney; however, the attorney’s address was omitted.  When an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14 files a proper power of attorney or signs a document on behalf of an applicant who is not already represented by an attorney from a different firm, that attorney is recognized as applicant’s representative.  37 C.F.R. §2.17(b)(1)(i)-(ii); TMEP §604.01.  As such, all correspondence by the USPTO will be sent to this attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §609.01.  Therefore, applicant may either (1) provide the attorney’s address for correspondence, or (2) state that the USPTO should continue to address correspondence to the attention of the attorney at the previously submitted correspondence address.  TMEP §609.01.

 

Applicant is advised that all correspondence by the USPTO will continue to be sent to the attention of the attorney at the correspondence address of record, unless applicant indicates otherwise.  Id.

 

 

Response Guidelines

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 and requirements 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. 

 

If the applicant has any questions or requires assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Thomas Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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.  

 

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 4/1/2019 FOR U.S. APPLICATION SERIAL NO. 88253315

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/1/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Thomas Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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.