To: | G-III Leather Fashions, Inc. (nyipdocket@nortonrosefulbright.com) |
Subject: | U.S. Trademark Application Serial No. 88255552 - MARC NEW YORK - N/A |
Sent: | September 06, 2019 12:01:37 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88255552
Mark: MARC NEW YORK
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Correspondence Address: Linda M. Merritt and Chris Weimer 98 SAN JACINTO BLVD., SUITE 1100
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Applicant: G-III Leather Fashions, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: September 06, 2019
This Office action is in response to applicant’s communication filed on August 15, 2019.
In a previous Office action dated February 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks.
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below. Therefore, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3699162 <�l�8-V>MARC BY MARC JACOBS for the following relevant goods “Spectacles, sunglasses and spectacle cases” in International Class 009; 4559716 MARC BY MARC JACOBS for the following relevant goods “Eyeglasses; sunglasses; eyeglass cases; sunglass cases” in International Class 009; 4735403 MARC BY MARC JACOBS for “Retail store services and on-line retail store services featuring clothing, footwear, headwear, handbags, leather goods, luggage, belts, eyewear, jewelry, watches, books and stationery items, cases for mobile phones, laptop carrying cases, headphones, protective cases, covers and sleeves for tablet computers, fragrances, cosmetics, skin and personal care products, hair accessories and ornaments” in International Class 035. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the present case the respective marks, MARC NEW YORK and MARC BY MARC JACOBS, are similar in appearance, sound, connotation, and commercial impression. Specifically, the marks share the identical term MARC. 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).
Furthermore, the dominant term in applicant’s mark is MARC because the additional wording NEW YORK is geographically descriptive of applicant’s goods and has been disclaimed. 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). Similarly, with respect to registrant’s marks, the wording BY MARC JACOBS merely describes the provider of the goods. As such, the dominant wording in registrant’s marks is also the term MARC.
In applicant’s response dated August 15, 2019, applicant argues that there is no likelihood of confusion between the marks because applicant’s prior registration, U.S. Reg. No. 4272467 was previously registered for “eyewear” goods, and had been coexisting with registrant’s marks. Applicant’s argument is unpersuasive because cancelled goods in a registration is “only evidence that the registration issued and does not afford [an applicant] any legal presumptions under Trademark Act Section 7(b),” including the presumption that the registration is valid, owned by the registrant, and the registrant has the exclusive right to use the mark in commerce in connection with the goods and/or services specified in the registration certificate. Bond v. Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016) (citing In re Pedersen, 109 USPQ2d 1185, 1197 (TTAB 2013)); see Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 1248, 178 USPQ 46, 47 (C.C.P.A. 1973) (statutory benefits of registration disappear when the registration is cancelled); TBMP §704.03(b)(1)(A); TMEP §1207.01(d)(iii), (d)(iv). Nor does a cancelled or expired registration provide constructive notice under Section 22, in which registration serves as constructive notice to the public of a registrant’s ownership of a mark. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] canceled registration does not provide constructive notice of anything.”).
Additionally, applicant argues that there is no likelihood of confusion between the marks because applicant’s prior registration, U.S. Reg. No. 3934706, for MARC NEW YORK for “handbags” in International Class 018 is also coexisting with registrant’s marks. Applicant’s argument is not persuasive because the goods at issue in the present case, “eyewear,” are different from the goods in applicant’s prior U.S. Reg. No. 3934706 for “handbags.” Moreover, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Furthermore, applicant argues that the term MARC is weak and diluted in International Class 009 and has attached third-party registrants in support of their argument. Although, on its face, the term MARC appears dilute in International Class 009 for eyewear goods, upon a closer look at the third-party registrations submitted by applicant it is evident why the registered MARC formative marks are coexisting. Specifically, all of the third-party registrations include the term MARC with at least an additional non-descriptive term. For example, in U.S. Reg. Nos. 4700078, 3922634, 3971650, 3189243, 2132417, and 1514378, the marks all combine the term MARC with a surname and/or stylized or with a design element. Similarly, in U.S. Reg. Nos. 4806006, 4647263, and 4643165, the term MARC is combined with another first name and/or stylized or with a design element. As such, the overall commercial impressions of the marks are very different. In the present case, applicant’s mark does not have any additional matter that is non-descriptive or that changes the mark’s overall commercial impression to distinguish it from the cited marks.
Given the similarities between the marks, consumers are likely to perceive applicant’s mark as an extension of registrant’s brands. Therefore, the marks are similar.
Relatedness of the Goods and Services
Applicant’s goods are “Eyewear; sunglasses” in International Class 009.
Registrant’s goods and services are:
When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, that 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) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and registrations are identical as to sunglasses. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Furthermore, the application uses broad wording to describe “eyewear”, which presumably encompasses all goods of the type described, including registrant’s more narrow “eyeglasses, spectacles, and sunglasses.” 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 registrant’s goods 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 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 are related.
Additionally, 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); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii). The previously attached Internet evidence from the webpages of “Kate Spade New York”, “Michael Kors”, and “Tom Ford”, shows entities that provide online retail stores also feature eyewear goods at their stores. Thus, applicant’s goods can be featured at registrant’s retail and online retail stores.
Because the marks are similar and the goods and services are related, as discussed above, consumers are likely to be confused as to the source of the goods and services. Accordingly, refusal to register the applied-for mark pursuant to Section 2(d) of the Trademark Act is now made final.
ASSISTANCE
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Sahar Nasserghodsi/
Sahar Nasserghodsi
Examining Attorney
Law Office 115
(571)272-9192
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