UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88323544
MARK: SIMONS
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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: La Maison Simons 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: 5/15/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Standard of Analysis for Section 2(d) Refusal
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 and differences in the marks.”); TMEP §1207.01.
Applicant seeks to register the mark SIMONS for “Accessories for men, women and children namely, jewellery and watches; Accessories for men, women and children namely, belts, umbrellas, straps, cuff links, tie clips, sunglasses, glasses cases, snowboard goggles, wallets, travel bags, tote bags, purses, handbag straps for bags, handbags, clutches, shoulder bags, back packs, purse straps, garment bags, athletic bags, golf bags school bags, beach bags, sports bags, cloth bags, vinyl bags, all-purpose plastic bags, all-purpose bags for commercial use, pouch bags, purse-bags, handbags, key holders and eyeglass cases; Clothing for men, women and children namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, coordinated clothing, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear, blouses, sleeveless jackets, pulls, t-shirts, ski jackets, ski vests, ski pants, ski suits, ski jackets, anoraks, ski jumpsuits, raincoats, trench coats, parkas, ponchos, indoor jackets, tennis skirts, windproof jackets, snowboard coats, snowboard pants, raincoats, overcoats, coats, trench coats, hunting jackets, duffle-coats, Canadian winter coats, capes, leotards, tights, overalls, sweat suits, swimsuits, bathrobes, pareos, bowties, neckties with a large bow, ties, neck warmers, hats, toques, hats, caps, visors, ear muffs, gloves, golf gloves, mittens, handkerchiefs, beanies, bonnets, socks, pantyhose, stockings, headbands, scarves, scarves; nightwear for men, women and children namely, shirts and nightgowns, baby dolls, pajamas, sleepwear, bathrobes, capes, bed jackets, loungewear, slips, petticoats, panties, bras, girdles and undergarments; footwear for men, women and children namely, shoes, slippers, loafers, moccasins, sandals, loafers, boat shoes, running shoes, sports shoes without crampons, sports shoes, beach shoes, evening shoes, exercise shoes, fishing shoes, golf shoes, boots, rain boots, sneakers and booties.”
The registered mark ROSS-SIMONS (U.S. Registration No. 3019208) includes “Jewelry and watches.”
Owner of the aforementioned registration also owns the registered mark ROSS-SIMMONS.COM (U.S. Registration No. 3019209), which includes “Jewelry and watches.”
The registered mark RAF SIMONS (U.S. Registration No. 4638887) is for “Precious metals and their alloys and goods in precious metals or coated therewith, namely, key rings, jewelry boxes, tie-clips, works of art, badges; jewelry, precious stones; horological and chronometric instruments; Leather and imitations of leather, and goods made of these materials, namely, purses, luggage; leather cases, imitation leather cases, and other leather and imitation leather cases, namely, attaché cases, briefcases, business card cases, business cases, carrying cases, cosmetic cases sold empty, credit card cases and holders, key cases, train cases and travel case; handbags, leather and imitation leather wallets; trunks and traveling bags; animal skins and hides; umbrellas and parasols; walking sticks; whips, harnesses and saddlery; Clothing, namely, socks and underwear, shirts, shorts, dresses, skirts, pants, trousers, men's suits, coats, blouses, chemises, pullovers, sweaters; belts for clothing; footwear; headwear, namely, hats and caps.”
The registered mark SIMONS OF LONDON (U.S. Registration No. 5025982) is for “Leather products, namely, leather cell phone cases.”
Similarity of the Marks
In a likelihood of confusion determination, the 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. 3019208; 3019209; 4638887
In the present case, applicant’s applied-for mark is SIMONS and the registered marks are ROSS-SIMONS (U.S. Registration No. 3019208), ROSS-SIMONS.COM (U.S. Registration No. 3019209) and RAF SIMONS (U.S. Registration No. 4638887). These marks are similar in appearance and commercial impression.
Firstly, marks may be confusingly similar in appearance where similar terms or similar parts of terms appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In the present case, applicant’s mark SIMONS creates a similar overall commercial impression to the registered marks because the registered marks consist of the wording in applicant’s mark in its entirety. The addition of “.COM” in the registered mark ROSS-SIMONS.COM provides no meaningful source-identifying significance. See Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007); TMEP §§1215.01, 1215.02, 1215.09; cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009). Thus, a non-source-identifying gTLD is less significant in creating a commercial impression in the minds of consumers, and is generally given little weight when comparing marks. See TMEP §1215.09.
Moreover, although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
As such, the marks are confusingly similar.
U.S. Registration No. 5025982
Here, applicant’s mark is SIMONS and the registered mark is SIMONS OF LONDON. These marks are similar in appearance and commercial impression.
Firstly, 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); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of a party’s goods 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). In the present case, the wording “OF LONDON” in the registrant’s mark is disclaimed, thus rendering the wording “SIMONS” the dominant portion of the mark.
Secondly, marks may be confusingly similar in appearance where similar terms or similar parts of terms appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In the present case, applicant’s mark SIMONS creates a similar overall commercial impression to the registered mark SIMONS OF LONDON because the registered mark consists of and starts with applicant’s mark in its entirety.
Lastly, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains the dominant wording in the registered mark and does not add any wording that would distinguish it from the mark.
As such, the marks are confusingly similar.
Based on the foregoing, the applicant’s applied-for and registrants’ marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
U.S. Registration Nos. 3019208 and 3019209
In this case, the identification “jewelry and watches” set forth in the application and registrations is identical.
Furthermore, the attached the attached Internet evidence from Coach, Michael Kors, and Shinola establishes that entities provide the relevant goods and market the goods under the same mark. The evidence also demonstrates that the relevant goods are provided through the same trade channels and used by the same classes of consumers in the same fields of use. For example, the attached evidence indicates that companies who offer goods in the nature of applicant’s shirts, bottoms, shoes, sunglasses, wallets, travel bags, handbags, bag straps, etc. also provide jewelry and watches all under the same mark. The evidence also indicates consumers are accustomed to entities in the industry providing a wide variety of clothing, bags, leather goods as well as jewelry and watches. Thus, they would reasonably believe that applicant’s goods and the goods in the registrations emanate from the same source. Accordingly, applicant’s and the 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).
U.S. Registration No. 4638887
Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods. Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
In this case, the identifications “jewelry, shirts, shorts, dresses, skirts, pants, men's suits, coats, blouses, sweaters, footwear, hats and caps” set forth in the application and registration are identical.
Further, the registration uses broad wording to describe “horological and chronometric instruments”, which presumably encompasses all goods of the type described, including applicant’s more narrow “watches.” 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)).
Lastly, the attached Internet evidence from Coach, Michael Kors, and Gucci establishes that entities provide the relevant goods and market the goods under the same mark. The evidence also demonstrates that the relevant goods are provided through the same trade channels and used by the same classes of consumers in the same fields of use. For example, the attached evidence indicates that companies who offer goods in the nature of applicant’s sunglasses, ties, scarves, gloves, belts etc. also provide a variety of clothing, leather goods, bags, and jewelry all under the same mark. The evidence also indicates consumers are accustomed to entities in the industry providing a wide variety of clothing, bags, leather goods, jewelry and watches as provided in the application and registration. Thus, they would reasonably believe that applicant’s and the registrant’s goods emanate from the same source. Accordingly, applicant’s and the 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).
U.S. Registration No. 5025982
Here, the attached Internet evidence from Coach, Michael Kors, Shinola, and Gucci establishes that entities provide the relevant goods and market the goods under the same mark. The evidence also demonstrates that the relevant goods are provided through the same trade channels and used by the same classes of consumers in the same fields of use. For example, the attached evidence indicates that companies who offer goods in the nature of applicant’s sunglasses, ties, scarves, gloves, belts, clothing, leather goods, bags, jewelry, etc. also provide leather products in the nature of leather cell phone cases all under the same mark. Thus, consumers would reasonably believe that applicant’s and the registrant’s goods emanate from the same source. Accordingly, applicant’s and the 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).
As such, because applicant’s and the registered marks are confusingly similar and the goods in the registrations are related to applicant’s goods, there is a likelihood of confusion between the marks. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.
Applicant should note the following ground for refusal.
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Please see the attached evidence from LEXISNEXIS®, establishing the surname significance of SIMONS. This evidence shows the applied-for mark appearing 49,417 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.
The second factor considered is whether anyone connected with the applicant uses the term as a surname. As shown from the attached Internet evidence from applicant’s website, “our story began in 1812 when Peter Simons arrived from Scotland and settled on a small farm near Quebec City… In 1840 his son John moved into the city to open a small shop… in 1870 John Simons moved his shop to 20 Cote De La Fabrique, where it remains to this day.” Further, as shown from the attached Internet evidence from Wikipedia, Peter Simons is the CEO of applicant La Maison Simons. Thus, the term “SIMONS” is the surname of the family who created the store and is currently the CEO of the applicant. A term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance. TMEP §1211.02(b)(iv); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business).
For these reasons, the mark would be viewed as primarily merely a surname, and registration must be refused on the Principal Register.
SUPPLEMENTAL REGISTER ADVISORY
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
If applicant responds to the refusals, applicant MUST also respond to the requirements set forth below.
IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIREMENT
Firstly, select entries from applicant’s identification of goods are indefinite and must be clarified. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Secondly, select entries from the applicant’s identification of goods need clarification because they are too broad and could include goods classified in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Thirdly, there are goods that are classified incorrectly. Applicant must amend the application to classify the goods in their appropriate international class. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Specifically, the wording “belts” in International Class 018 is unacceptable as indefinite because it is unclear what the nature of the goods are. Further, the entry as-is is improperly classified in International Class 018. “Belts” are generally considered clothing goods in International Class 025, unless otherwise clarified. Additionally, the wording is overly broad in International Class 018 as it may include, for example, “leather shoulder belts” in International Class 018, “sport bottle belts for running” in International Class 021, “belts” in International Class 025, and “swimming belts” in International Class 028. As such, applicant must either reclassify such goods in International Class 025, or further clarify the nature of the belts in the appropriate classes. Based on applicant’s other goods, the suggestion has been tailored to International Classes 018 and 025.
The wording “straps” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further the wording is overly broad and could include “all-purpose metal straps” in International Class 006, “cell phone straps” in International Class 009, “shoulder straps for weapons” in International Class 013, “straps for wristwatches” in International Class 014, “guitar straps” in International Class 015, “all-purpose leather straps” in International Class 018, “all-purpose nylon straps” in International Class 022, “shoe straps” in International Class 025, and “yoga straps” in International Class 028. Based on applicant’s other goods, the suggestion has been tailored to International Class 018 and 025.
The wording “cuff links” and “tie clips” in International Class 018 is unacceptable as misclassified. Goods in the nature of precious metals and certain goods made of precious metals or coated therewith, as well as jewellery, clocks and watches, and component parts therefor are generally classified in International Class 014. As such, applicant must classify the goods in the appropriate class.
The wording “sunglasses,” “glasses cases,” “snowboard goggles,” and “eyeglass cases” in International Class 018 is unacceptable as misclassified. Goods in the nature of sun glasses, eye glasses, goggles, and their cases are generally classified in International Class 009. Further the wording “glasses cases” is unacceptable as indefinite as it is not sufficiently clear what the nature of the goods are. Applicant must classify the goods in the appropriate class and further clarify the nature of the glasses cases (e.g., cases for eyeglasses and sunglasses).
The wording “garment bags” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the bags are. The wording is also overly broad and could include “garment bags for travel” in International Class 018 and “garment bags for storage” in International Class 022. Based on applicant’s other goods, the suggestion has been tailored to International Class 018.
The wording “golf bags” in International Class 018 is unacceptable as misclassified. Goods in the nature of sporting goods and equipment are generally classified in International Class 028. As such, applicant must classify the goods in the appropriate class.
The wording “cloth bags” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “cloth bags for travel” in International Class 018 and “cloth bags for laundry” in International Class 022. Based on applicant’s other goods, the suggestion has been tailored to International Class 018.
The wording “vinyl bags” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “vinyl bags in the nature of plastic bags for packaging” in International Class 016 and “vinyl bags for travel” in International Class 018. Based on applicant’s other goods, the suggestion has been tailored to International Class 018.
The wording “all-purpose plastic bags” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the bags are. Further, the goods are overly broad and could include “general purpose plastic bags” in International Class 016 and “all-purpose plastic carrying bags” in International Class 018. Based on applicant’s other goods, the suggestion has been tailored to International Class 018.
The wording “all-purpose bags for commercial use” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is misclassified and overly broad as it may include for example “plastic bags for packaging” in International Class 016 and “general utility bags for commercial use” in International Class 022. Thus, applicant must clarify the nature of the goods and classify them in the appropriate class. Based on applicant’s other goods, the suggestion has been tailored to International Class 022.
The wording “pouch bags” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the bags are. Further, the wording is overly broad and could include “plastic or paper pouch bags for merchandise packaging” in International Class 016, “rubber pouch bags for merchandise packaging” in International Class 017, “leather pouch bags” in International Class 018 and “textile pouch bags for merchandise packaging” in International Class 022. Based on applicant’s other goods, the suggestion has been tailored to International Class 018.
The wording “key holders” in International Class 018 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is misclassified and overly broad because it could include “metal key holders” in International Class 006, “key holders of precious metals” in International Class 014, and “non-metal key holders” in International Class 020. Thus, applicant must clarify the nature of the goods and classify them as appropriate.
The wording “coordinated clothing” and “knitwear” in International Class 025 in unacceptable as indefinite because it is not sufficiently clear what the nature of the clothing is. Thus, applicant must further indicate the nature of the clothing goods (e.g., shirts, pants, underwear, etc.).
The wording “pulls” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is misclassified and overly broad because it could include “common metal pulls” in International Class 006, “precious metal pulls” in International Class 014, “non-metal pulls” in International Class 020 and “zipper pulls” in International Class 026. Thus, applicant must clarify the nature of the goods and classify them as appropriate.
The wording “ties” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “railroad ties of metal” in International Class 006, “plastic ties for home use” in International Class 022, and “ties as clothing” in International Class 025. Based on applicant’s other goods, the suggestion has been tailored to International Class 025.
The wording “neck warmers” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “usb-powered neck warmers” in International Class 011 and “neck warmers as clothing” in International Class 025. Based on applicant’s other goods, the suggestion has been tailored to International Class 025.
The wording “caps” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include goods in numerous classes such as “metal caps for bottles” in International Class 006, “surgical caps” in International Class 010, “caps being headwear” in International Class 025, and “hair coloring caps” in International Class 026. Based on applicant’s other goods, the suggestion has been tailored to International Class 025.
The wording “visors” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “visors for helmets” in International Class 009, “visors being headwear” in International Class 025, and “visors for toy helmets” in International Class 028. Based on applicant’s other goods, the suggestion has been tailored to International Class 025.
The wording “golf gloves” in International Class 025 is unacceptable as misclassified. Goods in the nature of sporting goods and equipment are generally classified in International Class 028. As such, applicant must classify the goods in the appropriate class.
The wording “handkerchiefs” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is misclassified and overly broad because it could include “paper handkerchiefs” in International Class 016 and “textile handkerchiefs” in International Class 024. Thus, applicant must clarify the nature of the goods and classify them as appropriate. Based on applicant’s other goods, the suggestion has been tailored to International Class 024.
The wording “baby dolls” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “baby doll pajamas” in International Class 025 and “baby dolls” in International Class 028. Based on applicant’s other goods the suggestion has been tailored to International Class 025.
The wording “slips” in International Class 025 is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Thus, applicant must further clarify the nature of the slips (e.g., slips being underclothing).
Lastly, applicant is advised to delete or modify the duplicate entries in the identification of goods for “handbags” in International Class 018 and “blouses,” “ski jackets,” “rain coats,” “coats,” “trench coats,” “overalls,” “hats,” “scarves,” and “loafers” in International Class 025. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
Applicant may adopt the following identifications, if accurate (suggestions in bold):
Class 006: Metal key holders; common metal pulls
Class 009: Sunglasses; cases for eyeglasses and sunglasses; snowboard goggles
Class 014: Accessories for men, women and children namely, jewellery and watches, cuff links, tie clips, key holders of precious metals; precious metal pulls
Class 018: Accessories for men, women and children namely, leather shoulder belts, umbrellas, all-purpose leather straps, wallets, travel bags, tote bags, purses, handbag straps for bags, handbags, clutches, shoulder bags, back packs, purse straps, garment bags for travel, athletic bags, school bags, beach bags, sports bags, cloth bags for travel, vinyl bags for travel, all-purpose plastic carrying bags, leather pouch bags, purse-bags
Class 020: Non-metal key holders; non-metal pulls
Class 022: General utility bags for commercial use
Class 024: Textile handkerchiefs
Class 025: Clothing for men, women and children, namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, coordinated clothing in the nature of shirts and pants, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear in the nature of shirts and pants, sleeveless jackets, t-shirts, ski jackets, ski vests, ski pants, ski suits, anoraks, ski jumpsuits, raincoats, trench coats, parkas, ponchos, indoor jackets, tennis skirts, windproof jackets, snowboard coats, snowboard pants, overcoats, hunting jackets, duffle-coats, Canadian winter coats, capes, leotards, tights, sweat suits, swimsuits, bathrobes, pareos, bowties, neckties with a large bow, ties as clothing, neck warmers as clothing, hats, toques, caps, visors being headwear, ear muffs, gloves, mittens, beanies, bonnets, socks, pantyhose, stockings, headbands, scarves; nightwear for men, women and children, namely, shirts and nightgowns, baby doll pajamas, pajamas, sleepwear, bathrobes, capes, bed jackets, loungewear, slips being underclothing, petticoats, panties, bras, girdles and undergarments; footwear for men, women and children namely, shoes, slippers, loafers, moccasins, sandals, boat shoes, running shoes, sports shoes without crampons, sports shoes, beach shoes, evening shoes, exercise shoes, fishing shoes, golf shoes, boots, rain boots, sneakers and booties; belts; shoe straps
Class 026: Zipper pulls
Class 028: Golf bags; golf gloves
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).
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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 15 classes; however, applicant submitted fees sufficient for only 3 classes. 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.
NOTE: The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
CERTIFICATE OF REGISTRATION REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
RESPONSE GUIDELINES
Applicant may 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 refusals and requirements 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.
/Michael J. Clark/
Trademark Examining Attorney
Law Office 121
(571) 272-4967
michael.clark1@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.
