To: | Polk, Jihoon M. (Potatocat2017@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88302510 - TAZZA - N/A |
Sent: | 4/30/2019 10:18:45 AM |
Sent As: | ECOM127@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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88302510
MARK: TAZZA
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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: Polk, Jihoon M.
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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
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.
Applicant’s mark is “TAZZA” for “Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Footwear; Footwear for men; Footwear for women; Footwear made of vinyl; Footwear, namely, pumps; Footwear, namely, rubbers; Hats; T-shirts; Athletic footwear; Baby layettes for clothing; Baseball caps and hats; Belts for clothing; Climbing footwear; Combinations; Foulards; Fur hats; Gloves as clothing; Graphic T-shirts; Head wraps; Headbands for clothing; Leather hats; Leather belts; Pockets for clothing; Rain hats; Short sets; Shoulder wraps; Shoulder wraps for clothing; Small hats; Underarm clothing shields; Woolly hats” in International Class 25.
Reg. No. 4749195: Registrant’s mark is “TAZA33” for “ Athletic apparel, namely, shirts, hats and caps” in International Class 25.
Reg. No. 5682190: Registrant’s mark is “TAZZA” for “jewelry, namely, necklace, bracelets, earrings, rings, brooches, pendants” in International Class 14.
Comparison 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).
Reg. No. 4749195
Applicant’s mark is “TAZZA”.
Registrant’s mark is “TAZA33”.
Here, applicant’s mark is “TAZZA”, and registrant’s mark is “TAZA33”. Both marks contain the wording “TAZ”. Thus, the marks are confusingly similar in appearance and create a similar overall commercial impression.
Reg. No. 5682190
Applicant’s mark is “TAZZA”.
Registrant’s mark is “TAZZA”.
In the present case, applicant’s mark is “TAZZA”, and registrant’s mark is “TAZZA”. The literal elements of these marks are identical in sound and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because the literal elements are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Reg. No. 4749195
Applicant’s mark is for “Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Footwear; Footwear for men; Footwear for women; Footwear made of vinyl; Footwear, namely, pumps; Footwear, namely, rubbers; Hats; T-shirts; Athletic footwear; Baby layettes for clothing; Baseball caps and hats; Belts for clothing; Climbing footwear; Combinations; Foulards; Fur hats; Gloves as clothing; Graphic T-shirts; Head wraps; Headbands for clothing; Leather hats; Leather belts; Pockets for clothing; Rain hats; Short sets; Shoulder wraps; Shoulder wraps for clothing; Small hats; Underarm clothing shields; Woolly hats” in International Class 25.
Registrant’s mark is for “Athletic apparel, namely, shirts, hats and caps” in International Class 25.
In this case, the application uses broad wording to describe various clothing items, including t-shirts, hats, and baseball caps, which presumably encompasses all goods of the type described, including registrant’s more narrow “athletic apparel, namely, shirts, hats and caps.” 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.
Reg. No. 5682190
Applicant’s mark is for “Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Footwear; Footwear for men; Footwear for women; Footwear made of vinyl; Footwear, namely, pumps; Footwear, namely, rubbers; Hats; T-shirts; Athletic footwear; Baby layettes for clothing; Baseball caps and hats; Belts for clothing; Climbing footwear; Combinations; Foulards; Fur hats; Gloves as clothing; Graphic T-shirts; Head wraps; Headbands for clothing; Leather hats; Leather belts; Pockets for clothing; Rain hats; Short sets; Shoulder wraps; Shoulder wraps for clothing; Small hats; Underarm clothing shields; Woolly hats” in International Class 25.
Registrant’s mark is for “jewelry, namely, necklace, bracelets, earrings, rings, brooches, pendants” in International Class 14.
Conclusion
Because applicant’s and registrants’s marks are similar and the goods are related, there is a likelihood of confusion and applicant’s mark must be refused under Section 2(d) of the Lanham Act.
English Translation and Transliteration RequireMENT
If the transliterated wording has an English translation, applicant should use the following format, if accurate:
The English translation of “TAZZA” is “CUP”. The non-Latin characters in the mark transliterate to “{provide transliteration}” and this means “{provide definition}” in English.
TMEP §809.03.
If the transliterated wording does not have an English translation, applicant should use the following format, if accurate:
The English translation of “TAZZA” is “CUP”. The non-Latin characters in the mark transliterate to “{provide transliteration}” and this has no meaning in a foreign language.
Id.
Mark Description Requirement
The following description is suggested, if accurate: The mark consists of the wording “TAZZA”. The “ZZ” in the wording “TAZZA” appears as Korean characters.
Identification Requirement
Applicant has identified the following goods:
International Class 25: “Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, base layers; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Footwear; Footwear for men; Footwear for women; Footwear made of vinyl; Footwear, namely, pumps; Footwear, namely, rubbers; Hats; T-shirts; Athletic footwear; Baby layettes for clothing; Baseball caps and hats; Belts for clothing; Climbing footwear; Combinations; Foulards; Fur hats; Gloves as clothing; Graphic T-shirts; Head wraps; Headbands for clothing; Leather hats; Leather belts; Pockets for clothing; Rain hats; Short sets; Shoulder wraps; Shoulder wraps for clothing; Small hats; Underarm clothing shields; Woolly hats”
Clothing, namely, athletic sleeves
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language underlined for clarity:
International Class 10: “Compression sleeves for athletic use”
International Class 25: “Clothing, namely, arm warmers; Clothing, namely, base layers; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Footwear; Footwear for men; Footwear for women; Footwear made of vinyl; Footwear, namely, pumps; Footwear, namely, rubbers; Hats; T-shirts; Athletic footwear; Baby layettes for clothing; Baseball caps and hats; Belts for clothing; Climbing footwear; Combinations; Foulards; Fur hats; Gloves as clothing; Graphic T-shirts; Head wraps; Headbands for clothing; Leather hats; Leather belts; Pockets for clothing; Rain hats; Short sets; Shoulder wraps; Shoulder wraps for clothing; Small hats; Underarm clothing shields; Woolly hats”
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.
Multiple-Class Application Requirement
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
Brittany Colton
/Brittany Colton/
Trademark Examining Attorney
Law Office 127
(571) 272-2572
brittany.colton@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.