| To: | Hooli Home USA, Inc. (sandy@chowshenlaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88331592 - HOOLI - 710073 |
| Sent: | 5/21/2019 7:13:44 PM |
| Sent As: | ECOM111@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
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. 88331592
MARK: HOOLI
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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: Hooli Home USA, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION 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: 5/21/2019
The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2019), and has determined that the application cannot be advanced at this time, for the reasons detailed in this communication.
This correspondence details the following bases for refusing advancement of this application:
1. There is a registered mark that bars registration of the subject mark of this application; and
2. There are three potentially conflicting subject marks of prior-filed pending applications that may ultimately additionally bar registration.
Applicant filed this use-based application, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2012), on March 8, 2019, seeking to register the mark “HOOLI,” to identify the source of “Hoodies; Shirts; Tee shirts.”
Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject mark of U.S. Registration No. 5045838, attached hereto. Id. § 1052(d); see TMEP § 1207.01.
The cited registered mark is “HOOLI,” used to indicate the source of “Clothing, namely, t-shirts.”
Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services. 15 U.S.C. § 1052(d); see TMEP § 1207.01. In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark. 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor. In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010). In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely. See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.
In this comparison, the marks are legally identical, comprised of the term, “HOOLI,” presented entirely in standard character form. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008). Therefore, in actual use, both marks may be displayed in a same manner of font, style, color and size. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).
Consequently, because the marks are identical, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002).
The greater the degree of similarity between the marks, the lesser the degree of similarity between the goods or services is necessary to support a finding of likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). When the marks are identical, as they are here, it is only necessary that there be a viable relationship between the goods to support a finding of likelihood of confusion. In re Iolo Techs. LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).
Here, the comparison is between the following:
Listed goods in this application:
Hoodies; Shirts; Tee shirts.
Listed goods in U.S. Registration No. 5045838:
Clothing, namely, t-shirts.
Here, “Tee shirts”/”t-shirts” are explicit listings in this application and in Registration No. 5045838. In this regard, these goods are legally identical.
Where the listed goods in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type, and that the identified goods are offered in all normal channels of trade, and to all potential purchasers. In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii).
Here, the identified “shirts” in this application encompass the identified “t-shirts” listed in the cited registration. In this regard, these goods are legally identical.
Where the goods are legally identical, it must be presumed that the channels of trade and classes of purchasers are the same. In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”); see TMEP § 1207.01(a)(iii).
With respect to the listed “hoodies” in this application, and the “t-shirts” in the cited registrations, the attached evidence, comprised of digital images of clothing manufacturers’ and retailers’ website pages, supports a determination that these types of goods are commonly marketed without limitation or restrictions in connection with at least one source identifier by third parties, and are related goods. See, e.g., In re Infinity Broad. Corp., 60 U.S.P.Q.2d 1214, 1217–18 (TTAB 2001); In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1470 at n.6 (TTAB 1988). While it is common knowledge that these goods are related, the evidence is attached to demonstrate the clear relatedness of these goods.
In considering the channels of trade and classes of purchasers, because there are no limitations in the cited registration and the subject application, it is presumed that the respective goods travel in all normal channels of trade and are offered to all potential relevant consumers. In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017).
In view of the foregoing analysis, the respective goods are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.
Based on a determination that the marks are the same and the goods are legally identical, and the presumption that the goods move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
In addition, Applicant should note the potential bars to registration:
In addition, please be advised that THREE potentially conflicting marks in prior-filed pending applications may present a bar to registration also under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion. See attached pending applications.
Information is attached concerning pending Application Serial No. 79154979 (Filing Date: June 27, 2014), Application Serial No. 79975454 (Filing Date: June 27, 2014), and Application Serial No. 86896637 (Filing Date: February 3, 2016).
The filing dates of said applications precede Applicant’s filing date. There may be a likelihood of confusion between Applicant’s proposed mark and any of the cited marks in these applications. Therefore, if at least one of the earlier‑filed applications registers, registration may be additionally refused under Section 2(d). 37 C.F.R. § 2.83; see 15 U.S.C. § 1052(d); TMEP § 1208. Therefore, upon receipt of Applicant’s response to this Office Action, action on this case shall be suspended pending final disposition of the earlier-filed applications.
Applicant may present arguments relevant to this issue in a response to this Office Action. The election not to submit arguments pertaining to the prior pending applications at this time in no way limits Applicant’s right to address this issue at a later point if a Section 2(d) refusal issues vis-à-vis the cited earlier‑filed applications.
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.
Applicant must respond timely and completely to the issues raised in this Office Action. 15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03. Otherwise, this application will be abandoned. 37 C.F.R. § 2.65(a).
Please contact the undersigned attorney with any questions.
Sincerely,
/Judy Helfman/
Judith M. Helfman
Attorney at Law
Law Office 111
571/272-5892
judy.helfman@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.
