To: | Nomad Ventures Limited (uspto@trademarks411.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88271003 - VENTURI SPORTS - N/A |
Sent: | 4/9/2019 4:07:41 PM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88271003
MARK: VENTURI SPORTS
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Nomad Ventures Limited
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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: 4/9/2019
This Office action is supplemental to and supersedes the previous Office action issued on April 9, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration and a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, there is a likelihood of confusion with a registered mark and the identification of goods needs to remove parentheses.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues.
Applicant must address all issues raised in this Office action, in addition to the issues raised in the first Office action dated April 9, 2019. The issue raised in the previous April 9, 2019 Office action is as follows and is maintained: requirement for a disclaimer.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal – Likelihood of Confusion
• NEW ISSUE: Identification of Goods
• Disclaimer Required
Applicant must respond to all issues raised in this Office action and the previous April 9, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 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. 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.
The applied-for mark is VENTURI in standard characters, for “socks, t-shirts, shoes, shorts, pants, jackets, underwear” in International Class 25.
The registered mark is V VENTURI BY SCHÖFFEL in stylized font with a design, for “clothing, namely, clothing for skiing, mountaineering, travelling, trekking, hiking, leisure and rain, namely, trousers, suits, overcoats, half-coats, anoraks, capes, jackets, blousons, sweaters, dress-shirts, thermal underwear, sport-shirts, polo-shirts, undershirts, underpants, pants, chemises, sweatshirts, sweatpants, pullovers, trousers and t-shirts, fleece garments, namely, jackets, vests, sweatshirts, pullovers, headbands, and caps, softshell garments, namely, jackets, anoraks, vests, and pants, waterproof clothing, namely, jackets, anoraks, pants, gloves, and mittens, belts; headgear, namely, hats and caps; footwear” in International Class 25.
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).
The applied-for mark is VENTURI in standard characters.
The registered mark is V VENTURI BY SCHÖFFEL in stylized font with a design.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence from Puma, Under Armour, and Uniqlo shows that the wording SPORTS in the applied-for mark is merely descriptive of a feature of applicant’s clothing goods, as applicant’s clothing are used to play sports. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording VENTURI the more dominant element of the mark.
The dominant portion of applicant’s mark is entirely incorporated in the registrant’s mark, V VENTURI BY SCHÖFFEL. This similarity in appearance between the two marks creates the same overall commercial impression in the mind of the average purchaser. The marks are thus confusingly similar.
Therefore, the marks are similar for the purposes of likelihood of confusion.
Similarity of the Goods
The applied-for goods are “socks, t-shirts, shoes, shorts, pants, jackets, underwear” in International Class 25.
The registrant’s goods are “clothing, namely, clothing for skiing, mountaineering, travelling, trekking, hiking, leisure and rain, namely, trousers, suits, overcoats, half-coats, anoraks, capes, jackets, blousons, sweaters, dress-shirts, thermal underwear, sport-shirts, polo-shirts, undershirts, underpants, pants, chemises, sweatshirts, sweatpants, pullovers, trousers and t-shirts, fleece garments, namely, jackets, vests, sweatshirts, pullovers, headbands, and caps, softshell garments, namely, jackets, anoraks, vests, and pants, waterproof clothing, namely, jackets, anoraks, pants, gloves, and mittens, belts; headgear, namely, hats and caps; footwear” in International Class 25.
Based on the foregoing, registration for the applied-for mark is refused under Trademark Act Section 2(d).
IDENTIFICATION OF GOODS
Here, applicant has “intent to use” in parentheses and has the applied-for goods following. Applicant should remove this language as it has applied for a Section 1(b) basis, which is intent to use. Therefore, applicant must remove the parentheses from the identification.
Suggested Amendment
Applicant may amend to adopt the following suggested wording, if appropriate (changes in bold, comments in bold italic):
Class 25: socks, t-shirts, shoes, shorts, pants, jackets, underwear
Amendment Guidelines
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “SPORTS” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
As established above, the attached evidence from the webpages for Puma, Under Armour, and Uniqlo demonstrate that sports clothing consists of casual wear such as t-shirts, shorts, shoes, pants, socks, and underwear and the wording SPORTS is commonly used in connection with goods similar to the applied-for goods to mean that retailers feature clothing used for sports purposes. Thus, SPORTS merely describes a feature of applicant’s goods and must therefore be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SPORTS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.
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.
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
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.