UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88285796
MARK: MAJESTIC MAN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Chris Salgardo
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 4/30/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1516495, 3158191, 3154096, 3826508, 3829702, 4354261, 4584669, 4724074, 4846304, 4956158, 5003806, 5059775, and 5311628. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
In the instant case, applicant seeks to register the mark MAJESTIC MAN in standard characters for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Dress shirts; Hats; Jackets; Men's socks; Pants; Scarves; Short-sleeved or long-sleeved t-shirts; Shorts; Sneakers; Socks; Sweaters” in Class 25.
The mark in Registration No. 1516495, owned by Majestic Apparel, LLC is “MAJESTIC” in standard characters for “athletic uniforms, namely, baseball/softball, basketball, football, hockey and lacrosse uniforms; jerseys, tank tops, gym suits, jackets, warm-up suits, shirts, sweat shirts, caps, hats, vests, and underwear” in Class 25.
The mark in Registration No. 3158191, owned by Majestic Apparel, LLC is “MAJESTIC THREADS” in standard characters for “Shirts, t-shirts, sweatshirts, tank tops, athletic apparel, namely, jackets, t-shirts, and jackets” in Class 25.
The mark in Registration No. 3154096, owned by Majestic Apparel, LLC is “MAJESTIC THREADS” and design for “Shirts, t-shirts, sweatshirts, tank tops, athletic apparel, namely, jackets, t-shirts, and jackets” in Class 25.
The mark in Registration No. 3826508, owned by Majestic Apparel, LLC is “MAJESTIC SELECT” in standard characters for “Shirts, T-shirts, sweatshirts, fleece jackets” in Class 25.
The mark in Registration No. 3829702, owned by Majestic Apparel, LLC is “MAJESTIC SELECT” and design for “Shirts, T-shirts, sweatshirts, fleece jackets” in Class 25.
The mark in Registration No. 4354261, owned by Majestic Apparel, LLC is “IF IT HAPPENS IN BASEBALL IT HAPPENS IN MAJESTIC” in standard characters for “Athletic uniforms; Hooded sweat shirts; Jackets; Jerseys; Pants; Pullovers; Shirts; Shorts; Sweat jackets; Sweat pants; Sweat shirts; T-shirts; Vests” in Class 25.
The mark in Registration No. 4584669, owned by Majestic Apparel, LLC is “MAJESTIC” and design for “Athletic uniforms; Jackets; Pants; Shirts; Shorts; Sweat shirts” in Class 25.
The mark in Registration No. 4724074, owned by Majestic Apparel, LLC is “MAJESTIC BANGOR PENNSYLVANIA” and design for “Athletic uniforms; Jackets; Jerseys; Pants; Shirts; Shorts; Sweat shirts” in Class 25.
The mark in Registration No. 4846304, owned by Majestic Apparel, LLC is “TEAM MAJESTIC” in standard characters for “Athletic uniforms; Jackets; Jerseys; Pants; Shirts; Shorts; Sweat shirts” in Class 25.
The mark in Registration No. 4956158, owned by Majestic Apparel, LLC is “MAJESTIC” and design for “Athletic uniforms; Jackets; Jerseys; Pants; Shirts; Shorts; Sweat shirts” in Class 25.
The mark in Registration No. 5003806, owned by Majestic Apparel, LLC is “ALWAYS BASEBALL. ALWAYS MAJESTIC” in standard characters for “Athletic uniforms; jackets; shirts; shorts; sweat shirts” in Class 25.
The mark in Registration No. 5059775, owned by Majestic Apparel, LLC is “MAJESTIC FAN FASHION” and design for “Athletic uniforms; Jackets; Jerseys; Pants; Shirts; Shorts; Sweat shirts” in Class 25.
The mark in Registration No. 5311628, owned by Majestic Apparel, LLC is “MAJESTIC” and design for “Jackets; Shirts; Shorts; Sweat shirts” in Class 25.
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 and differences in the marks.”); TMEP §1207.01.
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 this instance, applicant’s mark and registrant’s marks have the term “MAJESTIC”. 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, registrant has disclaimed “THREADS” in Reg. Nos. 3158191 and 3154096, “SELECT” in Reg. Nos. 3826508 and 3829702, “BANGOR PENNSYLVANIA” in Reg. No. 4724074, and “FASHION” in Reg. No. 5059775. Additionally, as discussed below, applicant’s term “MAN” is descriptive and must be disclaimed. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). 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). Thus, the dominant portion in applicant’s mark and the registered marks is the term “MAJESTIC”.
Based on the foregoing, the marks are confusingly similar.
Relatedness of the Goods
In this case, the following goods in the application and registrations are identical:
· “Shirts” in the goods identified in all of the registrant’s marks;
· “Pants” in Reg. Nos. 4354261, 4584669, 4724074, 4846304, 4956158, and 5059775;
· “Jackets” in Reg. Nos. 1516495, 3158191, 3154096, 4584669, 4724074, 4846304, 4956158, 5003806, 5059775, and 5311628;
· “Caps and hats” in Reg. No. 1516495;
· “Athletic Uniforms” in Reg. Nos. 4354261, 4584669, 4724074, 4846304, 4956158, 5003806, and 5059775; and
· “Shorts” in Reg. Nos. 4354261, 4584669, 4724074, 4846304, 4956158, 5003806, 5059775, and 5311628.
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, in this case, the application and registrations use broad wording to describe the goods, which presumably encompasses all goods of the type described, including applicant’s registrant’s more narrow goods. For example:
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.
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant should note the following additional ground for refusal.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
In this case, applicant must disclaim the wording “MAN” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a quality, characteristic , feature, purpose, or use 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).
The attached evidence from Oxford English Dictionary shows that the word “man” is the “plural form of man”. Furthermore, the attached evidence from Gap, BSN Sports, and Columbia shows this wording is commonly used in connection with similar goods to mean the goods are designed to be used by men. Thus, the wording merely describes applicant’s goods because it describes the very nature of applicant’s goods, namely, that the goods are designed for use by a man.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MAN” 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
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.
/Bridget Watson/
Bridget Watson
Trademark Law Clerk
Law Office 128
(571) 272-7163
bridget.watson@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.