To: | G-III Leather Fashions, Inc. (nyipdocket@nortonrosefulbright.com) |
Subject: | U.S. Trademark Application Serial No. 88255552 - MARC NEW YORK - N/A - Request for Reconsideration Denied - Return to TTAB |
Sent: | October 01, 2020 11:37:55 AM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
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 |
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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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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: October 01, 2020
Applicant has applied to register the mark MARC NEW YORK for “Eyewear; Sunglasses” in International Class 009.
Refusal to register the applied-for marks is maintained and continued because of a likelihood of confusion with the marks in U.S. Registration Nos. 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.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); 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, the term MARC appears as the dominant feature of registrant’s marks because the additional wording BY MARC JACOBS merely describes the provider of registrant’s goods and/or services.
Furthermore, with respect to U.S. Reg. No. 4559716, the goods are identical as to sunglasses. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 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.
Additionally, the application uses broad wording to describe eyewear, which presumably encompasses all goods of the type described, including registrant’s more narrow eyeglasses 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, applicant’s goods are also related to registrant’s services in U.S. Reg. No. 4735403. Specifically, the attached evidence from “Christian Dior”, “Warby Parker”, “Ray-Ban”, “Ted Baker”, and “Prada”, and the previously attached Internet evidence from “Kate Spade New York”, “Michael Kors”, and “Tom Ford”, shows entities that provide online retail stores also feature eyewear goods at their stores. 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).
In applicant’s request for reconsideration dated March 6, 2020, applicant argues that applicant’s prior registration for eyewear coexisted with the cited registrations for multiple years without confusion. Applicant’s argument is not persuasive because applicant’s prior registration for eyewear has been cancelled. Further, a cancelled or expired 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.”).
Applicant also argues that its other registrations for the mark MARC NEW YORK for other goods and services coexist with registrant’s marks and obviates any likelihood of confusion. However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.” In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered. In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi).
Furthermore, applicant argues that the term MARC is weak and diluted in International Class 009 and had previously 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.
In the present case, the marks are similar and the goods are identical and/or related. Accordingly, the following refusal made final in the Office action dated September 6, 2019 are maintained and continued:
• Refusal – Section 2(d) Likelihood of Confusion
See TMEP §§715.03(a)(ii)(B), 715.04(a).
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
/Sahar Nasserghodsi/
Sahar Nasserghodsi
Examining Attorney
Law Office 115
(571)272-9192
Sahar.Nasserghodsi@uspto.gov