UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/15/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues that Applicant Must Address

 

• Refusal under Section 2(d) – Likelihood of Confusion
• Advisory:  Prior-Filed Application
• Indefinite color claim and description of mark must be amended
• Indefinite identification of goods must be addressed

 

1.     REFUSAL UNDER SECTION 2(D): 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. 4704357.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is described, in part, as “styled characters or initials RH” for various types of clothing in International Class 25, including, among other items, jackets, pants, dresses and t-shirts. The drawing of the mark shows the letters RH in what appears to be the Palace Script MT font from Microsoft Word, in red color. 

 

U.S. Registration No. 4704357 has a mark for the letters RH in standard character mark for various types of clothing in International Class 25, including, among other items, jackets, pants dresses and t-shirts.

 

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.

 

Similarity of the Marks

 

In this case, all three marks consist of the letters RH, with the difference being that registrant’s mark and the prior applicant’s mark are both in standard characters whereas applicant’s mark is described in the application as being “styled characters.”  Using stylized characters and/or a specific font does not distinguish applicant’s mark from the registered mark.  That is because a mark in typed or standard characters (as is registrant’s mark) may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters (as is applicant’s mark) and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Therefore, because registrant registered its RH mark in typed or standard characters, it can be presented the same as applicant’s mark. 

 

Relatedness of the Goods

 

Where the marks of the respective parties are virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

In this case, applicant’s goods clothing in International Class 25.  The application includes jackets, pants, dresses and t-shirts among its clothing.  Registrant’s goods also clothing in International Class 25, and the registration lists jackets, pants, dresses and t-shirts among its clothing.  Therefore, there is relatedness of the goods in this instance as applicant and registrant both sell clothing, including multiple identical types of clothing.  The attached Internet evidence, consisting of printouts of webpages from various clothing companies, establishes that the same entity commonly sells jackets, pants, dresses and t-shirts under the same mark.  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).

 

Because the marks include the same letters and the goods are in part identical and in part very closely related, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4704357.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

2.  ADVISORY:  PRIOR-FILED APPLICATION

 

The effective filing date of pending U.S. Application Serial No. 87272692 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

3.  INDEFINITE COLOR CLAIM AND DESCRIPTION OF MARK MUST BE AMENDED

 

Applicant must clarify the colors that are being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in the color red; however, the color claim lists “Dark Red or Light Red” and the description of the mark describes the font as “Dark Red or Light Red” and having “a slight shadow.”

 

Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Applicant must clarify whether color is being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in a particular color, red; however, the color claim lists “Dark Red or Light Red” and the description of the mark describes the font as “Dark Red or Light Red” and having “a slight shadow.”

 

An applicant may seek registration of only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01; see 15 U.S.C. §1051; In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516-17 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002).  A mark with a changeable or “phantom” element such as varying or changing colors is generally considered to be more than one mark.  See In re Hayes, 62 USPQ2d at 1445.  In addition to the requirement to select one mark, the colors in the drawing of the mark, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Applicant may clarify whether color is a feature of the mark by satisfying one of the following:

 

(1)       If applicant is not limiting the application to particular colors, applicant must submit a (a) new drawing of the mark in black and white only, with no other colors, (b) statement authorizing deletion of any color claim, if appropriate, and (c) description of the literal and design elements in the mark that omits any reference to color.  A registration for a mark with a black-and-white drawing covers depictions of the mark in all possible color combinations and is not limited to any particular color scheme.  See In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972); TMEP §807.14(e)(i).  In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq. 

 

The following description is suggested, if accurate:

 

“The mark consists of the letters “RH” in a stylized font”

 

(2)       If applicant is limiting the application to particular colors, applicant must submit a (a) new drawing showing the mark in the specific colors for which registration is sought, or confirm that the original drawing shows the mark for which registration is sought, (b) an amended color claim and description of the mark that deletes the reference changeable or varying colors and restricts the color claim and description to only those colors in the new or original drawing, as appropriate.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The color red is claimed as a feature of the mark.”

 

Description:  “The mark consists of the letters “RH” in a red stylized font.”

 

See TMEP §807.07(a)(i)-(ii).

 

For more information about drawings and instructions on how to submit a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

4.  INDEFINITE IDENTIFICATION OF GOODS MUST BE ADDRESSED

 

Applicant’s identification of goods includes four indefinite descriptions because they do not indicate specific type of clothing items that fall into those categories.  Therefore, those identifications of goods must be clarified because they do not make clear what the goods are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Suggestions of wording for the amendment of the identification of goods are as follows: 

 

Clothing, namely, Men, Women, Children, Juniors, Adults {indicate specific item, e.g., leggings, stretch pants, camisoles, etc.} containing slimming substances

 

Embroidered clothing, namely, Men, Women, Children, Juniors, Adults {indicate specific item, e.g., shirts, jackets, pants, etc.}

 

Knitwear, namely, Men, Women, Children, Juniors, Adults {indicate specific knitted clothing items, e.g., shirts, dresses, sweaters, etc.}

 

Outerwear, namely, Men, Women, Children, Juniors, Adults {indicate specific clothing items, e.g., coats, hats, gloves, etc.}

 

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.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

 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.  

 

 

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/15/2019 FOR U.S. APPLICATION SERIAL NO. 88303237

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/15/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

Germick, Edward

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.