To: | Premier Lacrosse League, Inc. (uspto@tm4smallbiz.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88315345 - CHROME - N/A |
Sent: | 5/22/2019 8:47:44 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88315345
MARK: CHROME
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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: Premier Lacrosse League, Inc.
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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: 5/22/2019
SEARCH FOR CONFLICTING MARKS - SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
PARTIAL REFUSAL APPLIES ONLY TO THE FOLLOWING GOODS:
“TRADING CARDS”, “GYM BAGS, ATHLETIC BAGS, BACKPACKS, ALL INTENDED TO CREATE AN ASSOCIATION WITH A PROFESSIONAL LACROSSE TEAM”; AND “CLOTHING NAMELY, SHIRTS, PANTS, HATS, SWEATSHIRTS, SHORTS, TOPS, BOTTOMS, JACKETS, PAJAMAS, SOCKS, SCARVES, HEADGEAR, SWEATPANTS, LACROSSE JERSEYS, LACROSSE PADS, ATHLETIC UNIFORMS; ALL INTENDED TO CREATE AN ASSOCIATION WITH A PROFESSIONAL LACROSSE TEAM”
The applicant has applied to register the proposed mark “CHROME” for a variety of goods and services. The following are applicable for purposes of this refusal: “trading cards”, “gym bags, athletic bags, backpacks, all intended to create an association with a professional lacrosse team”; and “clothing namely, shirts, pants, hats, sweatshirts, shorts, tops, bottoms, jackets, pajamas, socks, scarves, headgear, sweatpants, lacrosse jerseys, lacrosse pads, athletic uniforms; all intended to create an association with a professional lacrosse team”.
The registrants’ goods are as follows:
3723162 (“CHROME” and design) for “Bags, namely, all purpose carrying bags, book bags, and messenger bags; backpacks; messenger packs; Bags, namely, all purpose sport bags, waist packs; luggage” in International Class 18; and
“Footwear; clothing, namely, t-shirts, shirts, sweatshirts, jackets, wind resistant jackets, pants, sweaters, shorts, belts, caps, visors, beanies, socks, shoes, coats, parkas, hats, and boots; headwear” in International Class 25;
4323179 (“CHROME” in standard character form) for “Bags, namely, all purpose carrying bags, all purpose sport bags, book bags, and messenger bags, backpacks, messenger packs, waist packs, luggage” in International Class 18; and
4352791 (“CHROME” in standard character form) for “trading cards” in International Class 16.
In General
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.
Comparing 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).
U.S. Registration Nos. 4323179 and 4352791
In the present case, applicant’s mark is “CHROME” in standard character form and registrants’ marks are “CHROME” in standard character form. These marks are identical in appearance, 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 they 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 and/or services. Id.
Therefore, the marks are confusingly similar.
U.S. Registration No. 3723162
In the present case, the applicant’s mark is “CHROME” in standard character form and the registrant’s mark consists of the word “CHROME” with the design of a “winged lion”. 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)).
Overall, the marks have the same commercial impression.
Comparing the Goods
U.S. Registration Nos. 3723162 and 4323179
In this case, the registration(s) use(s) broad wording to describe its clothing and bags, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow goods which are intended to create an association with a professional lacrosse team. 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 and/or services 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 and/or services are related.
U.S. Registration No. 4352791
In this case, the goods and/or services in the application and registration(s) are identical. Specifically, the goods are identified as “trading cards”. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. 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 and/or services are related.
Conclusion
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Applicant may substitute the following wording and classifications, if accurate:
Class 9 – “Downloadable computer and video game programs; Downloadable computer and video game software; Headgear being protective helmets”;
Class 16 – “Bumper stickers; posters; decals; sports trading cards; souvenir programs concerning {indicate specific subject matter or event}; magazines featuring information in the field of lacrosse”;
Class 18 – “Gym bags, athletic bags, backpacks, all intended to create an association with a professional lacrosse team”;
Class 21 – “Sport bottles sold empty; reusable drinking bottles sold empty”;
Class 25 – “Clothing intended to create an association with a professional lacrosse team, namely, shirts, pants, hats, sweatshirts, shorts, tops, bottoms, jackets,
pajamas, socks, scarves, headgear hats, sweatpants, lacrosse jerseys, lacrosse pads, athletic uniforms; all intended to create an association with a professional
lacrosse team;
Class 28 – “Protective padding for playing lacrosse”;
Class 35 – “Charitable services, namely, organizing and conducting volunteer programs and community service projects; online retail store services featuring clothing,
apparel, tickets to sporting events, athletic equipment, bags, backpacks, stickers, sports trading cards, collectible merchandise, game worn apparel
and equipment”;
Class 38 - “Streaming of lacrosse games on the internet”; and
Class 41 – “Entertainment services, namely, organizing and conducting athletic competitions and games in the field of field lacrosse; entertainment services in the nature
of on-going television and radio programs in the field of lacrosse and rendering live lacrosse games and lacrosse exhibitions for the purpose of distribution through broadcast
media; the production and distribution of radio and television broadcasts of lacrosse games, lacrosse events and programs in the field of lacrosse; Streaming lacrosse games online over the
internet; production of television programs in the field of lacrosse matches; conducting and arranging lacrosse clinics, lacrosse camps, and lacrosse events; fan club
services; entertainment services, namely, providing a website featuring the following content non-downloadable videos in the field of television highlights, interactive television highlights,
radio programs, radio highlights, and audio recordings in the field of lacrosse, and lacrosse news in the nature of information, statistics and trivia about lacrosse; Ticket
reservation and booking services for sporting events”.
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 REQUIREMENTS
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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.
PARTIAL ABANDONMENT ADVISORY
ASSISTANCE
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.
/Julie M. Guttadauro/
Julie M. Guttadauro
Examining Attorney
Law Office 106
(571) 272-5875
julie.guttadauro@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.