Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  December 11, 2019

 

Introduction

 

This Office action is supplemental to the previous Office action issued on April 15, 2019 in connection with this application. The trademark examining attorney now issues the following new refusal:  Section 2(d) Refusal for a likelihood of confusion with the mark is US. Registration No. 5730775.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated April 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 a registered mark, failure to show the applied-for mark in use in commerce with any of the specified goods. 

 

The following is a Summary of Issues that applicant must address:

 

            •  NEW ISSUE:  Section 2(d) Refusal - Likelihood of Confusion

 

Applicant must respond to all issues raised in this Office action and the previous April 15, 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

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5730775, 5652481, 4519203, 5032104, 1761450, and 5652482. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration attached to the previous Office action.  

 

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.

 

Applicant has applied for the mark “LOGOS”, for the following identification of goods and services, as amended:

 

International Class 025

Clothing for adults, children, and babies, namely, shirts, pants, jackets, sweatshirts, hooded sweatshirts, sweaters, shorts, tank tops, polo shirts, underwear; Footwear for adults, children and babies; Headwear, namely, hats, caps; Scarves; Belts

 

International Class 035

Retail store services featuring clothing and accessories; On-line retail store services featuring clothing and accessories

 

A.     Registration No. 5652481

 

Registrant has registered the mark “LOGO,” a composite mark consisting of words and a design, for the following relevant goods: “Backpacks; Tote bags; All purpose sport bags; All-purpose athletic bags; All-purpose carrying bags; All-purpose reusable carrying bags; Athletic bags; Drawstring bags.”

 

(1)   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).

 

Here, the applicant’s mark is merely the plural form of the word portion of the registrant’s mark. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd. , 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co. , 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay , 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

As to the design portion of the registered mark, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services . In re Aquitaine Wine USA, LLC , 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc . , 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc. , 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc. , 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

The dominant portion of registrant’s mark is the wording LOGO, which is simply the singular version of the applicant’s mark. Thus the marks are similar.

 

(2)   Relatedness of the Goods and Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC , 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The Internet evidence attached to the previous Office action, consisting of screenshots from the websites of LL Bean, Adidas, and Michael Kors, establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets those goods under the same mark, and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Specifically: the screenshots from LL Bean show that the same entity often manufactures and produces backpacks, all-purpose carrying bags, clothing, and footwear for all ages and genders, as well as offers those goods for sale via online and in person retail services to the same class of purchasers; the screen shots from Adidas show that the same entity manufactures and produces hooded sweatshirts, various types of athletic bags, drawstring bags, bum bags, and various types of headwear, and provides those goods for sale via online retail services to the same class of purchasers; and the screen shots from Michael Kors show that the same entity manufactures and produces shirts for men and woman, as well as several types of bags including cross body bags. 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).

 

Finally, regarding applicant’s identification of services in international Class 035, 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). Here, the applicant’s services include retail store services that feature registrant’s goods.

 

Therefore, the goods and services are related.

 

(3)   Conclusion

 

Because the applicant’s mark is just the plural form of the registrant’s, and because many of the goods and services of both the applicant and registrant are related or identical, registration is refused for a likelihood of confusion.

 

B.     Registration No. 4519203

 

Registrant has registered the mark “LOGO LAYERS” for “Apparel, namely, sweaters, pants, jackets, scarves, T-shirts, headwear and footwear.”

 

(1)    Similarity of the Marks

 

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).

 

Here, registrant has disclaimed the wording “LAYERS” in its mark, making it less significant when comparing it to the applicant’s mark. Therefore, applicant’s mark is merely the plural form of the dominant portion of the registrant’s mark. Thus, the marks are similar.

 

(2)    Relatedness of the Goods and Services

 

In this case, several of the goods in the application and registration are identical, specifically, sweaters, pants, jackets, headwear, and footwear are all included in both identifications of goods. Therefore, it is presumed that the channels of trade and class(es) 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)).  

 

Regarding the remainder of the goods and services, based on the evidence above attached to the previous Office action, applicant’s goods are manufactured and produced by the same entities, and sold via retail store services by those entities. Thus, the marks are related.

 

(3)    Conclusion

 

Because the dominant portion of the registrant’s mark is merely the singular form of the applicant’s mark, and because the applicant’s goods in international class 025 are identical to the registrants and the goods and services in the other classes are all related, registration is refused for a likelihood of confusion.

 

C.     Registration Nos. 5032104 and 1761450

 

Registrant has registered the mark “LOGO ATHLETIC” in both registrations for “Apparel, namely, shirts; headwear, namely, caps, hats,” and “Sports apparel; namely, T-shirts, sweatshirts and sweaters.”

 

(1)   Similarity of the Marks

 

In this case, the analysis is the same as the previous refusal. Registrant has disclaimed the wording “ATHLETIC” in its mark, making the applicant’s mark merely the plural form of the dominant portion of the registrant’s mark. Therefore the marks are similar.

 

(2)   Relatedness of the Goods and Services

 

Here, all of registrant’s goods in both registrations are identical to the applicant’s International Class 025 goods. Specifically, both applicant and registrant include “shirts,” “headwear,” “caps,” “hats,” “sweatshirts,” and “sweaters” in their respective identifications of goods. The only exception is that applicant has applied for shirts and registrant in the 1761450 registration has registered for "T-shirts.” However, because shirts encompass T-shirts, these goods are legally identical. 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); 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)).

 

In regards to the applicant’s services in class 035, the evidence attached to the previous Office action shows that those are all related to the registrant’s goods. Thus, the goods and services are related.

 

(3)   Conclusion

 

Because the dominant portion of the registrant’s mark is merely the singular form of the applicant’s mark, and because the applicant’s goods in international class 025 are identical to the registrants and the goods and services in the other classes are all related, registration is refused for a likelihood of confusion.

 

D. Registration No. 5652482

 

Registrant has registered the mark “LOGOBRANDS” for the relevant goods “Backpacks; Tote bags; All purpose sport bags; All-purpose athletic bags; All- purpose carrying bags; All-purpose reusable carrying bags; Athletic bags; Drawstring bags.”

 

(1)   Similarity of the marks

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772 , 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am. , 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co. , 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Here, while the registrant’s mark is a unitary word, the first two syllables of that unitary word are identical to applicant’s entire mark (taking into consideration that plural forms of words are essentially identical). Therefore, both marks are have essentially identical dominant features and thus are similar.

 

(2)   Relatedness of the Goods

 

The registrant’s identification of goods is identical to that in Registration No. 5642481, as each has the same owner. Thus, the analysis is the same as above.

 

E.     Registration No. 5730775 (NEW ISSUE)

 

The prior-pending application in USPTO Serial No. 87564658 referenced in the previous Office action has registered. See attached registration.

 

Registrant has registered the mark “LOGOSFLOW” in stylized wording for “Canvas shopping bags.”

 

(1)   Similarity of the Marks

 

In this case, the applied for and registered marks share a common first term “LOGOS.” Thus the portion of the mark on which consumers will focus, and the prominent element of the marks, are identical. Further, this wording is distinctive in relation to the applicant’s and registrant’s goods, and therefore is considered a source identifying feature of the marks that carries significant weight in the likelihood of confusion analysis. Finally, as discussed above, the stylized wording component of the registered mark does not obviate the similarity between the marks as the similar wording will be used to refer to the applicant’s and registrant’s goods and services and is therefore considered with greater weight than the design in the likelihood of confusion analysis.

 

Therefore, the marks are similar.

 

(2)   Relatedness of the Goods and Services

 

The additional evidence attached herein, consisting of additional screenshots from the webpages of LL Bean, Adidas, and Michael Kors, establishes that the same entity commonly provides and sells online “canvas shopping bags” as well as applicant’s goods. Therefore, the goods are related.

 

(3)   Conclusion

 

Because the applied-for and registered marks share the same first term and prominent distinctive element, and because the goods and services are commonly provided by the same entities, registration is refused for a likelihood of confusion between the marks.

 

F.     Conclusion

 

For the reasons above, registration is refused for a likelihood of confusion with the six registered marks. Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each refusal and/or 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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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 nonfinal Office action.    

 

 

/Joseph Greene/

Joe Greene

Trademark Examining Attorney

USPTO, Law Office 125

(571)272-5763

joseph.greene@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 December 11, 2019 for

U.S. Trademark Application Serial No. 88290517

 

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. 

 

 

/Joseph Greene/

Joe Greene

Trademark Examining Attorney

USPTO, Law Office 125

(571)272-5763

joseph.greene@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 December 11, 2019, 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.”