United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88323544
Mark: SIMONS
|
|
|
Correspondence Address:
|
|
|
Applicant: La Maison Simons Inc.
|
|
|
Reference/Docket No. 3000.0007
Correspondence Email Address: |
|
FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 04, 2020
This Office action is in response to applicant’s communication filed on June 28, 2020 (“applicant’s response”).
In previous Office actions dated May 15, 2019 and December 9, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion; Section 2(e)(4) Refusal – Primarily Merely a Surname.
In addition, applicant was required to satisfy the following requirements: Unacceptable Section 2(f) Claim Based on Five or More Years’ Use – Unverified Statement; Identification and Classification of Goods Requirement; Multiple-Class Application Requirements; Certificate of Foreign Registration Required.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied/withdrawn: Unacceptable Section 2(f) Claim Based on Five or More Years’ Use – Unverified Statement; Identification and Classification of Goods Requirement; Multiple-Class Application Requirements. See TMEP §713.02.
Additionally, based on applicant’s response, the following refusals have been withdrawn: Section 2(d) Refusal – Likelihood of Confusion with regards to U.S. Registration Nos. 3019208 and 3019209; Section 2(e)(4) Refusal – Primarily Merely a Surname. See TMEP §§713.02, 714.04.
However, the trademark examining attorney considered applicant’s arguments with regards to the likelihood of confusion between the applied-for mark and registered mark in U.S. Registration Nos. 4638887 and 5025982, and in total, found them unpersuasive. Accordingly, the Section 2(d) refusal with regards to U.S. Registration Nos. 4638887 and 5025982 is maintained now made FINAL. See 37 C.F.R. §2.63(b).
Lastly, in applicant’s response dated June 28, 2020, applicant requests a suspension because the certificate of registration and the English translation thereof are not yet available. A suspension for the foreign certificate is improper in an application based solely on a Section 44(e) filing basis, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). See TMEP §1004.01. Accordingly, the requirement for the certificate of foreign registration is maintained and now made FINAL. See 37 C.F.R. §2.63(b).
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.
Applicant seeks to register the mark SIMONS for, as amended, “sunglasses; cases for eyeglasses and sunglasses; snowboard goggles; 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; general utility bags for commercial use; textile handkerchiefs; 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, pants, dresses, sweaters and skirts, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear in the nature of shirts, pants, dresses, sweaters and skirts, 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”
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 No. 4638887
In the present case, applicant’s applied-for mark is SIMONS and the registered mark is 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, the applied-for mark SIMONS creates a similar overall commercial impression to the registered mark RAF SIMONS because the registered mark consists of the wording in applicant’s mark in its entirety.
Moreover, although applicant’s mark does not contain the entirety of the registered mark, the applied-for mark is likely to appear to prospective purchasers as a shortened form of the registered 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, the applied-for mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark, merely appearing as a shortened version of the mark, and does not add any wording that would distinguish it from that mark.
Lastly, even if potential consumers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance and commercial impression of the respective marks, that applicant’s goods provided under the SIMONS mark constitute a new or additional product line from the same source as the goods provided under the registered mark RAF SIMONS, and that applicant’s mark is merely a variation of the registered mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”). Further, as shown from the attached Internet evidence from Hugo Boss, Salvatore Ferragamo, Giorgio Armani, Ermenegildo Zegna, and Ralph Lauren entities in the industry that consist of full names commonly provide product lines consisting of solely the surname, i.e., Boss, Ferragamo, Armani, Zegna, and Lauren. Thus, when taking into consideration the applied-for and registered marks are similar in appearance and overall commercial impression, potential consumers could reasonably assume that applicant’s mark SIMONS is a new product line provided under the registered mark RAF SIMONS.
U.S. Registration No. 5025982
Here, the applied-for mark is SIMONS and the registered mark is SIMONS OF LONDON (U.S. Registration No. 5025982). 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 registered 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, the applied-for mark SIMONS creates a similar overall commercial impression to the registered mark SIMONS OF LONDON because the registered mark consists of and starts with the wording in the applied-for mark in its entirety.
Moreover, although the applied-for mark does not contain the entirety of the registered mark, the applied-for mark is likely to appear to prospective purchasers as a shortened form of the registered 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, the applied-for 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.
Lastly, even if potential consumers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance and commercial impression of the respective marks, that applicant’s goods provided under the SIMONS mark constitute a new or additional product line from the same source as the goods provided under the registered mark SIMONS OF LONDON, and that applicant’s mark is merely a variation of the registered mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”). Thus, when taking into consideration the applied-for and registered marks are similar in appearance and overall commercial impression, potential consumers could reasonably assume that applicant’s mark SIMONS is a new product line provided under the registered mark SIMONS OF LONDON.
In response, applicant argues that the wording “SIMONS” is a surname and therefore the registered mark is entitled to a very narrow scope of protection. The trademark examining attorney respectfully disagrees.
Based on the foregoing, the applied-for and registered marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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 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 registration uses broad wording to describe “clothing, namely, socks and underwear, shirts, shorts, dresses, skirts, pants, trousers, men’s suits, coats, blouses, chemises, pullovers, sweaters,” “footwear,” and “headwear, namely, hats and caps,” which presumably encompasses all goods of the type described, including applicant’s more narrow, as amended, “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, pants, dresses, sweaters and skirts, cardigans, suits, jeans, polo shirts, undershirts, turtlenecks, overalls, bermuda shorts, tank tops, sweaters, knitwear in the nature of shirts, pants, dresses, sweaters and skirts, 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; shoe straps.” 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).
Additionally, the application, as amended, uses broad wording to describe “belts” and “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,” which presumably encompasses all goods of the type described, including applicant’s more narrow, “belts for clothing” and “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; umbrellas and parasols; whips, harnesses and saddlery.” See id. Thus, applicant’s and registrant’s relevant 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 previously attached Internet evidence from Coach, Michael Kors, and Gucci, and the attached Internet evidence from Prada, Fendi, Hugo Boss, Salvatore Ferragamo, Giorgio Armani, Kate Spade, Tom Ford, Ralph Lauren, Ermenegildo Zegna, Calvin Klein, Old Navy, H&M, Oakley, Burton, Quicksilver, and Smith, 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, accessories for men, women and children namely, wallets, travel bags, tote bags, purses, handbags, clutches, shoulder bags, back packs, clothing for men, women and children, namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, etc. also provide a variety of clothing, leather goods, bags, and jewelry, such as in the registration, all under the same mark. The evidence also indicates consumers are accustomed to entities in the industry providing a wide variety of clothing, footwear, bags, leather goods, eyewear and accessories 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 previously attached Internet evidence from Coach, Michael Kors, Shinola, and Gucci with the attached Internet evidence from Salvatore Ferragamo, Fendi, Tom Ford, Prada, H&M, Calvin Klein, Quicksilver, and Kate Spade 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, accessories for men, women and children namely, wallets, travel bags, tote bags, purses, handbags, clutches, shoulder bags, back packs, clothing for men, women and children, namely, dresses, pants, coats, shirts, jackets, suits, skirts, sport jackets, blouses, pant-skirts, vests, shawls, shorts, jumpers, etc. also provide a variety of leather products and cell phone cases including leather cell phone cases, as identified in the registration, 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).
In response, applicant states that the amendments to the specification of goods render moot the likelihood of confusion refusal. The trademark examining attorney respectfully disagrees.
In any case, the compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, as shown above, the goods set forth in the registrations and application, as amended, remain encompassing of one another and/or are commonly provided by entities under the same mark as shown from the evidence of record. Thus, the goods are related for purposes of finding a likelihood of confusion between the marks under Section 2(d) of the Trademark Act.
In conclusion, the applied-for mark, SIMONS, is confusingly similar to the registered marks, RAF SIMONS (U.S. Registration No. 4638887) and SIMONS OF LONDON (U.S. Registration No. 5025982), because the registered marks contain the applied-for mark in its entirety and the applied-for mark appears to be merely a shortened version of the registered marks. In addition, the goods set forth in the registration and application, as amended, are encompassing of one another and/or are commonly provided by entities under the same mark as shown from the evidence of record, and therefore are related for purposes of finding a likelihood of confusion between the marks under Section 2(d) of the Trademark Act.
Lastly, the overriding concern here is not only to prevent consumer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Accordingly, the refusal pursuant to Section 2(d) of the Trademark Act with regards to U.S. Registration Nos. 4638887 and 5025982 is hereby made FINAL.
If applicant responds to the aforementioned refusal, applicant must also address the maintained and now made final requirement below.
CERTIFICATE OF FOREIGN REGISTRATION REQUIRED
In applicant’s response dated June 28, 2020, applicant requests a suspension because the certificate of registration and the English translation thereof are not yet available. A suspension for the foreign certificate is improper in an application based solely on a Section 44(e) filing basis, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). See TMEP §1004.01. Thus, applicant has not provided a copy of a foreign registration and the requirement is maintained and now made FINAL.
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
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).
Accordingly, the requirement to provide the certificate of foreign registration is hereby made FINAL.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Michael J. Clark/
Trademark Examining Attorney
Law Office 121
(571) 272-4967
michael.clark1@uspto.gov
RESPONSE GUIDANCE
