Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

FINAL OFFICE ACTION

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:  June 23, 2020

This application is lifted from suspension.  Application Serial No. 88155796 has abandoned and no longer presents a bar to registration.  In addition, upon further review, the Likelihood of Confusion refusal as to U.S. Registration No. 2313280 is withdrawn.  TMEP §714.04.

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 0717211.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  The refusal under Trademark Act Section 2(e)(1) is also made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

FINAL REFUSAL - LIKELIHOOD OF CONFUSION

This refusal is limited to Class 25.

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 0717211.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

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. 

In this case, the applied-for mark is STADRY for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bras; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Headwear; Hooded sweatshirts; Pajamas; Pajamas treated with fire and heat retardants; Pants; Shirts; Shirts and short-sleeved shirts; Shorts; Sleepwear; Socks; Sweaters; Trousers; Athletic shorts; Athletic sweaters; Bottoms as clothing; Children's headwear; Crop pants; Dress pants; Golf shirts; Jackets; Jerseys; Knit shirts; Long underwear; Short sets; Sports pants; Sports shirts; Stretch pants; Sweat pants; Sweat shirts; T-shirts; Tops as clothing; Track pants.”  The registered mark is STAYDRY for “Panties.”

Comparison of Marks

The marks convey similar commercial impressions in that they are likely to be pronounced in a highly similar, if not identical manner, with STA in the applied-for mark merely being an alternative spelling of STAY in the registered mark.  The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

Comparison of Goods and/or Services

The goods are related in that they are wearing apparel.  Moreover, as the attached Internet evidence shows, panties, in the registration, are often sold together with various types of clothing apparel, including those identified in the application.  For example, the following entities sell both panties as well as a variety of wearing apparel, footwear and headwear:

1. Gap
2. Betsey Johnson
3. Banana Republic
4. Maidenform
5. Victoria’s Secret

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely panties and wearing apparel such as tops, shorts, pants, headwear and footwear are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

Applicant contends that confusion is unlikely because the goods in the cited registration are pull-up diapers.  However, the identification of goods in the cited registration are “panties.” As the identified goods in the registration are “panties,” these are the goods at issue in the Likelihood of Confusion determination.

Because the goods are similar in that they are wearing apparel and because the goods are often provided by the same entity and sold together in similar channels of trade, they are likely to be encountered by the same class of potential consumers. 

Consumers who encounter similar marks for related goods and/or services are likely to be confused as to their source. 

For the foregoing reasons, the refusal to register the applied-for mark, pursuant to Section 2(d) of the Trademark Act, is continued and now made FINAL.

REFUSAL – MARK IS MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a characteristic or feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

In this case, applicant seeks to register the mark STADRY for:

• Bed bases; Bed frames; Bed headboards; Bed pillows; Bedroom furniture; Beds; Beds, mattresses, pillows and bolsters; Mattress cushions; Mattress foundations; Mattress toppers; Accent pillows; Head supporting pillows
• Bed blankets; Bed covers; Bed linen; Bed pads; Bed sheets; Bed skirts; Bed spreads; Bed throws; Mattress covers; Mattress pads; Pillow cases; Pillow covers; Pillow shams; Sheet sets; Towels; Crib sheets; Fitted bed sheets; Flat bed sheets
• Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bras; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Headwear; Hooded sweatshirts; Pajamas; Pajamas treated with fire and heat retardants; Pants; Shirts; Shirts and short-sleeved shirts; Shorts; Sleepwear; Socks; Sweaters; Trousers; Athletic shorts; Athletic sweaters; Bottoms as clothing; Children's headwear; Crop pants; Dress pants; Golf shirts; Jackets; Jerseys; Knit shirts; Long underwear; Short sets; Sports pants; Sports shirts; Stretch pants; Sweat pants; Sweat shirts; T-shirts; Tops as clothing; Track pants

The applied-for mark is an alternative manner of depicting “stay dry.”  The attached dictionary entries define the wording in the mark as follows:

1. Stay - to continue in a place or condition
2. Dry - free or relatively free from a liquid and especially water

In its response, applicant, as applied to the goods, “stay dry” means that the good “wicks moisture away from you so that you stay dry.”  Applicant’s own definition of what the mark means as to the goods points to the descriptive nature of the mark, as the goods allow the consumer to stay dry. 

Moreover, as the attached Internet evidence shows, fabrics the wick moisture away from the user are often described by the term “stay dry.”  For example:

1.  Wazoodle Fabrics indicates:  Are you looking for the best moisture wicking stay dry fabrics for diapers, activewear and performance wear and other uses? Our stay dry fabrics are professionally designed for ALL uses
2. Macys indicates: “Want to stay dry during your workout? Pay close attention to what your activewear is made out of. We’re here to break down the type of fabrics you should keep an eye out for when shopping for activewear. That’s where moisture-wicking fabrics come in…”
3. Olorum Sports – discusses moisture-wicking fabrics which allow the user to “stay cool and dry.”
4. Amazon – features moisture-wicking pillow cases and sheets described as “stay dry”
5. Protectabed – features mattress and pillow protectors described as moisture-wicking and helps the user “stay dry and comfortable”

Therefore, the mark is descriptive in relation to the goods in that they allow the user so be free from moisture, or to stay dry.

Applicant contends that the mark is not descriptive because it is a double entendre.  That is, applicant indicates that the mark is subject to multiple meanings and interpretations.  However, the three definitions provided by applicant all relate to being free from moisture, and thus, staying dry.  Therefore, applicant has not provided evidence that the mark, as it relates to the goods, is a double entendre.

Applicant also contends that the mark is suggestive, rather than descriptive.  However, a consumer who views the applied-for mark will immediately understand that it relates to being free of moisture.  Therefore, the mark is descriptive as to the goods.

For the foregoing reasons, the refusal to register the applied-for mark, pursuant to Section 2(e)(1) of the Trademark Act, is continued and now made FINAL.

SUPPLEMENTAL REGISTER ADVISORY

The Supplemental Register advisory, again set forth below, remains applicable.

Although an amendment to the Supplemental Register would normally be an appropriate response to a descriptiveness refusal for marks that are capable of indicating source, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

The amendment to allege use may be filed through the following link:

http://teas.gov.uspto.report/aou/

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@uspto.gov

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on June 23, 2020 for

U.S. Trademark Application Serial No. 88258866

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. 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@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 June 23, 2020, 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.”