Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  October 01, 2019

 

This Office action is in response to the applicant’s communication dated September 30, 2019. In a previous Office action issued April 1, 2019, the examining attorney refused registration of the applied-for mark for the following issues: a refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration Nos. 4289085 and 5483320; a requirement that the identification of good and services be made definite; and requirement for a complete mark description.

 

After consideration of the applicant’s communication, the following requirements are SATISFIED: the requirement that the identification of good and services be made definite; and the requirement for a complete mark description. In addition, USPTO records indicate that the U.S. Registration No. 4289085 has been cancelled and/or expired and is no longer a bar to registration of applicant’s mark.  Therefore, the Section 2(d) refusal is withdrawn with respect to this particular registration.

 

However, the following refusal is CONTINUED and MAINTAINED: the refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration No. 5483320. Additionally, the application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Prior-Filed Applications

The pending applications below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed applications below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the applications below is provided in this letter.

 

            - U.S. Application Serial Nos. 88121934 and 87268141

 

Advisory: Section 2(d) Likelihood of Confusion

In the applicant’s September 30, 2019 communication, the applicant argues that the shared term “EXP” in the marks conveys a different commercial impression in the applied-for mark and registered mark. In particular, the applicant argues that consumers will perceive the term “EXP” in the applied-for mark as “EXPRESS” and “EXP” in the registered mark as “EXPOSURE”; however, the applicant submits no evidence to support this claim. Further, the determination of likelihood of confusion is based on the marks as set forth in the application and registration at issue. Because the term “EXP” is not paired with the term “EXPRESS” in the applied-for mark, consumers could perceive it to mean something other than that term, such as “EXPOSURE”.

 

In addition, the applicant argues that the goods and services are dissimilar because the goods are different in nature and marketed through different trade channels and to different classes of consumers. However, as noted, the determination 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). Here, neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); TMEP §1207.01(a)(iii).

 

Furthermore, the goods and services are similar in nature as each is in the field of clothing. 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). Moreover, the evidence attached to the April 1, 2019 Office action demonstrated that the same entity commonly manufactures a variety of clothing, including winter wear, 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.

 

Lastly, the applicant’s claim of consumer sophistication is unpersuasive. First, the applicant has submitted no evidence to support that claim. Second, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).  Third, the evidence of record demonstrates that clothing items can include low cost items that could facilitate consumer confusion. Thus, a likelihood of confusion remains between the applied-for and registered marks and the refusal is continued and maintained.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 01, 2019 for

U.S. Trademark Application Serial No. 88253315

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

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

 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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).

 

 

 

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.”