UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88308463
MARK: FUCT UP
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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: Erik Brunetti
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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: 3/29/2019
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.
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is “FUCT UP” for Belts, coats, jackets, jerseys, pants, shirts, shorts, socks, sweat pants, sweat shirts, sweaters, swim suits, t-shirts, tank tops, tights, vests, wind-resistant jackets, wristbands as clothing; Beanies, caps being headwear, hats, scarves, visors being headwear; Footwear, namely, boots, sandals, shoes. The registered mark is “F’D UP” with a design element for Caps; Pants; Shirts; Shorts.
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.
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).
In the present case, applicant’s mark is “FUCT UP” while the registered mark is “F’D UP”. The attached evidence shows that “FUCT UP” means “FUCKED UP”, and that “F’D UP” also refers to the term “FUCKED UP”. Thus, the terms convey the same overall impression. Please see:
http://www.urbandictionary.com/define.php?term=fuct%20up
http://stirlingstandsup.com/fuct/
http://www.urbandictionary.com/define.php?term=F%27d%20up
http://www.amazon.com/Little-Fd-Up-Feminism-Dirty/dp/1580053718
The registered mark also contains a design element. However 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)).
Comparison of the Goods
In the present case, applicant’s goods are identical and related to the goods identified by the registrant. Both have identified caps, pants, shirts and shorts. Applicant has also identified belts, coats, jackets, jerseys, socks, swimsuits, tights, vests, wristbands, and footwear. However as the attached evidence shows, these goods commonly originate from the same source as caps, pants, shirts and shorts. Please see:
http://www.express.com/mens-clothing/fashion-accessories/belts-suspenders/cat1850009
http://www.columbia.com/sale-discount-outlet/
http://www.duckworthco.com/collections/all-women
http://www.underarmour.com/en-us/womens
http://www.underarmour.com/en-us/mens/wristbands/g/39c1
http://www.ctshirts.com/us/mens-suits/separates/vests/
Since applicant’s mark is similar to the registered mark and the identified goods are overlapping and related, there is a likelihood of confusion with regard to the source of applicant’s goods. Therefore, registration is refused under Section 2(d) of the Trademark Act.
Section 2(a) Advisory – Scandalous Matter
Applicant’s mark, “FUCT UP”, appears to consist of or include matter that may be immoral or scandalous. See Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §1203.01. The words “immoral” and “scandalous” may have somewhat different connotations; however, immoral matter has been included in the same category as scandalous matter. TMEP §1203.01; see In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 673 n.6 (C.C.P.A. 1981) (Because of the court’s holding that appellant’s mark was scandalous, “it [was] unnecessary to consider whether appellant’s mark [was] ‘immoral.’ [The court] note[d] the dearth of reported trademark decisions in which the term ‘immoral’ [had] been directly applied.”).
For a mark to be “scandalous,” the evidence must show that the mark would be considered shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation. In re Fox, 702 F.3d 633, 635, 105 USPQ2d 1247, 1248 (Fed. Cir. 2012) (quoting In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994)); see TMEP §1203.01.
A mark is scandalous when the evidence demonstrates that a substantial composite of the general public (although not necessarily a majority) would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. See In re Fox, 702 F.3d at 635, 105 USPQ2d at 1248 (quoting In re Mavety Media Grp. Ltd., 33 F.3d at 1371, 31 USPQ2d at 1925-26); In re The Boulevard Entm’t, Inc., 334 F.3d 1336, 1340, 67 USPQ2d 1475, 1477 (Fed. Cir. 2003); TMEP §1203.01.
In this case, applicant seeks registration of “FUCT UP”. The attached evidence shows the wording “FUCT” means “fucked”. The evidence also shows that the term “FUCKED UP” is vulgar slang for thoroughly confused, disordered, or damaged. Therefore, the mark appears to be scandalous. Please see:
http://www.urbandictionary.com/define.php?term=fuct
http://www.merriam-webster.com/dictionary/fucked-up
http://www.ahdictionary.com/word/search.html?q=fucked-up
http://www.macmillandictionary.com/dictionary/american/fucked-up
Registration normally would be refused under the scandalousness provision Section 2(a) because applicant’s mark consists of or includes matter that may be immoral or scandalous and thus violates the statute. However, the constitutionality of this provision is under review at the U.S. Supreme Court in Iancu v. Brunetti, Docket No. 18-302.
Because the constitutionality of the scandalous provision of Section 2(a) remains in question, action on this application will be SUSPENDED when it is in condition for final action until either the termination of proceedings in the U.S. Supreme Court in Iancu v. Brunetti. See 37 C.F.R. §2.67; TMEP §§716, 716.02(d).
Applicant is advised that, if the U.S. Supreme Court ultimately determines that the scandalousness provision of the Trademark Act is constitutional, then registration may be refused on the ground that the applied-for mark consists of or includes matter that may be immoral or scandalous. 15 U.S.C. §1052(a); see TMEP §1203.01.
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.
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.
/Tara J Pate/
Office of the Deputy Commissioner for Trademark Examination Policy
(571)272-4714
tara.pate@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.