UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88342367
MARK: KOSHER
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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: Fadlon, Isack
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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: 6/1/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Likelihood of Confusion – Section 2(d) Refusal
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.
Similarity of 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).
Applicant’s mark is “KOSHER”.
Registrant’s mark is “KOSHER CASUAL”.
The marks are similar because they both begin with or consist entirely of the wording “KOSHER”.
Accordingly, the relevant marks are sufficiently similar to support a finding of likelihood of confusion.
Similarity of Goods/Services
Applicant’s goods are “Clothing, namely, hats; caps; visors; athletic shirts; athletic pants; athletic footwear; athletic socks; sweat bands; wrist bands; sweat pants; sweat shirts; scarves; jackets; underwear; bathing suits; and yoga apparel.”
Registrant’s goods are “Skirts, namely, athletic skirts, long skirts, denim skirts, pencil skirts, swim skirts, and school skirts; Bicycle shorts; Shirts, namely, shirts for swimming, tee shirts, tunics, and shell tops; Shirt extensions; Sleeve extensions worn separately with other tops; Women's vests; Leggings; Bandanas.”
These goods are (1) identical and/or overlapping (e.g. applicant’s athletic shirts encompass registrant’s shirts for swimming) and/or (2) highly related in that they are all apparel items that are likely to emanate from the same source and/or be provided/marketed in connection with one another.
Accordingly, based on the similarity of the marks and the relatedness of the goods, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant has the option to respond to the refusal to register by submitting evidence and legal arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following refusal(s)/requirement(s).
Section 2(e)(1) Refusal – Mark Is Merely Descriptive
In this case, the term “KOSHER” refers to clothing that does not contain a mix of wool and linen. See attached webpages evidencing that kosher clothing refers to clothing items that do not contain a mix of wool and linen. As such, when this term is used in connection with applicant’s clothing goods, it merely indicates to consumers that the goods do not contain both wool and linen.
For the foregoing reasons, the proposed mark, KOSHER, is refused registration because it is merely descriptive of the applicant’s goods and/or services under Trademark Act Section 2(e)(1).
Generic - Advisory
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement.
Amend Identification of Goods to Avoid Deceptiveness Refusal
This feature or characteristic is considered desirable for applicant’s goods because it does not breach a Biblical law. See attached webpages. However, if some or all of the goods contain both linen and wool in them, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic, i.e. that they do not contain both wool and linen in any one clothing/apparel good. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to add the following to the end of applicant’s identification of goods, if accurate: “; none of the foregoing containing both wool and linen in any single clothing/apparel item.”
Identification of Goods Must Be Clarified
Wording in the identification of goods is (1) indefinite and must be clarified, (2) overbroad in that it encompasses goods in more than one international classification and/or (3) misclassified. See TMEP §1402.01. Please see suggested identification below for specific wording that requires clarification and/or reclassification.
Applicant may adopt the following identification, if accurate. Please note that bolded wording/punctuation indicates a suggested addition(s)/amendment(s) to applicant’s current identification and the bracketed entries below require applicant to insert information. Please also note that the suggested language from the potential deceptiveness refusal section above is included below.
Class 25:
“Clothing, namely, hats; caps being headwear; visors being headwear; athletic shirts; athletic pants; athletic footwear; athletic socks; sweat bands; wrist bands as clothing; sweat pants; sweat shirts; scarves; jackets; underwear; bathing suits; and yoga apparel, namely, {insert specific type/nature of yoga apparel, e.g. tops and bottoms}; none of the foregoing containing both wool and linen in any single clothing/apparel item.".”
Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
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.
Responding to this Office Action
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to avoid incurring an additional fee. See 37 C.F.R. §2.23(a)(1), (b).
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Telephone/Email Suggested for Questions
/Meghan Reinhart/
Trademark Examining Attorney
Law Office 108
(571) 272-2943
meghan.reinhart@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.