To: | Resolute Lacrosse LLC (trademarks@standleyllp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88348806 - RESOLUTE - RES3325-005 |
Sent: | 5/29/2019 11:14:03 AM |
Sent As: | ECOM103@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88348806
MARK: RESOLUTE
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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: Resolute Lacrosse LLC
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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: 5/29/2019
Introduction:
Summary of Issues:
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 and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
The applied-for stylized mark is “RESOLUTE” for “Bottoms as clothing for men and women; Headwear for men and women; Hooded sweatshirts for men and women; Knitwear, namely, shirts, shorts, and caps; Shorts for men and women; Sweatshirts for men and women; Tops as clothing; Tops as clothing for men and women; Wearable garments and clothing, namely, shirts” in International Class 025.
The standard character mark under Registration No. 4290793 is “RESOLUTE” for “denim pants” in International Class 025.
The standard character mark under Registration No. 4770368 is “RESOLUTE RACING” for “Athletic pants; Athletic shorts; Athletic tops and bottoms for rowing; Bandanas; Bathing suits; Bathrobes; Belts; Bow ties; Capri pants; Capris; Caps; Cardigans; Dress shirts; Flip flops; Gloves; Hats; Jackets; Long-sleeved shirts; Neckties; Pajamas; Pants; Polo shirts; Rain jackets; Rash guards; Rash vests; Rugby shirts; Scarves; Shoes; Shorts; Ski jackets; Sneakers; Socks; Sports bras; Sweaters; Sweatpants; Sweatshirts; T-shirts; Tank tops; Underwear; Unitards; Vests” in International Class 025.
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).
In this case, applicant’s stylized mark is “RESOLUTE” and registrant’s standard character mark is “RESOLUTE”. These marks are identical in sound and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they have identical word portions, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Moreover, applicant’s stylization does not obviate likelihood of confusion between the two marks because registrant’s mark is in standard character. A mark in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters generally will not avoid likelihood of confusion with a mark in standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Therefore, the marks are confusingly similar.
The applicant’s stylized mark “RESOLUTE” is confusingly similar to the registrant’s standard character mark “RESOLUTE” in appearance, sound, connotation, and commercial impression. Accordingly, the marks in their entireties are considered similar for likelihood of confusion purposes.
Relatedness of the Goods:
The applied-for stylized mark is “RESOLUTE” for “Bottoms as clothing for men and women; Headwear for men and women; Hooded sweatshirts for men and women; Knitwear, namely, shirts, shorts, and caps; Shorts for men and women; Sweatshirts for men and women; Tops as clothing; Tops as clothing for men and women; Wearable garments and clothing, namely, shirts” in International Class 025.
The standard character mark under Registration No. 4290793 is “RESOLUTE” for “denim pants” in International Class 025.
Further, determining likelihood of confusion 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., __ F.3d __, 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)).
In this case, the applicant’s goods are related to the registrant’s goods because applicant uses broad wording to describe its goods, which presumably encompasses all goods of the type described, including registrant’s more narrow goods. For example, applicant’s broad identification of “Bottoms as clothing for men and women” in its list of goods encompasses the following goods listed in applicant’s identification of goods: “denim pants” 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, these goods of applicant and registrant are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, these goods of applicant and registrant are related.
As to the remaining goods in the application, the attached Internet evidence, consisting of third-party retailers selling different kinds of headwear, sweatshirts, shorts, tops, and denim pants under the same mark, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See attached internet evidence at: http://oldnavy.gap.com/; http://www.express.com/; http://www.jcrew.com/.
Therefore, when purchasers encounter these goods under highly similar marks, they are likely to be confused. 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).
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.
Similarity of the Marks:
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In this case, applicant’s stylized mark is “RESOLUTE” and registrant’s standard character mark is “RESOLUTE RACING”. Thus, applicant’s mark and registrant’s mark share the identical wording “RESOLUTE”. Here, the registrant has disclaimed the word “RACING”. This additional disclaimed wording does not obviate confusion because the term “RESOLUTE” is more significant or dominant in creating a commercial impression. 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); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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).
Moreover, applicant’s stylization does not obviate likelihood of confusion between the two marks because registrant’s mark is in standard character. A mark in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters generally will not avoid likelihood of confusion with a mark in standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Therefore, the marks are confusingly similar.
The applicant’s stylized mark “RESOLUTE” is confusingly similar to the registrant’s standard character mark “RESOLUTE RACING” in appearance, sound, connotation, and commercial impression. Accordingly, the marks in their entireties are considered similar for likelihood of confusion purposes.
Relatedness 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 applied-for stylized mark is “RESOLUTE” for “Bottoms as clothing for men and women; Headwear for men and women; Hooded sweatshirts for men and women; Knitwear, namely, shirts, shorts, and caps; Shorts for men and women; Sweatshirts for men and women; Tops as clothing; Tops as clothing for men and women; Wearable garments and clothing, namely, shirts” in International Class 025.
The standard character mark under Registration No. 4770368 is “RESOLUTE RACING” for “Athletic pants; Athletic shorts; Athletic tops and bottoms for rowing; Bandanas; Bathing suits; Bathrobes; Belts; Bow ties; Capri pants; Capris; Caps; Cardigans; Dress shirts; Flip flops; Gloves; Hats; Jackets; Long-sleeved shirts; Neckties; Pajamas; Pants; Polo shirts; Rain jackets; Rash guards; Rash vests; Rugby shirts; Scarves; Shoes; Shorts; Ski jackets; Sneakers; Socks; Sports bras; Sweaters; Sweatpants; Sweatshirts; T-shirts; Tank tops; Underwear; Unitards; Vests” in International Class 025.
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).
Further, determining likelihood of confusion 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., __ F.3d __, 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)).
In this case, the applicant’s goods are related to the registrant’s goods because applicant uses broad wording to describe its goods, which presumably encompasses all goods of the type described, including registrant’s more narrow goods. For example, applicant’s broad identification of:
· “Bottoms as clothing for men and women” in its list of goods encompasses the following goods listed in registrant’s identification of goods: “Athletic pants; Athletic shorts; Athletic…bottoms for rowing; Capri pants; Capris; Pants”;
· “Headwear for men and women” in its list of goods encompasses the following goods listed in registrant’s identification of goods: “Bandanas; Caps; Hats”;
· “Tops as clothing” and “Tops as clothing for men and women” in its list of goods encompasses the following goods listed in registrant’s identification of goods “Athletic tops…for rowing; Cardigans; Dress shirts; Jackets; Long-sleeved shirts; Polo shirts; Rain Jackets; Rash vests; Rugby shirts; Ski jackets; Sweaters; Sweatshirts; T-shirts; Tank tops; Vests”; and
· “Knitwear, namely, shirts” and “Wearable garments and clothing, namely, shirts” in its list of goods encompasses the following goods listed in registrant’s identification of goods “Dress shirts; Long-sleeved shirts; Polo shirts; Rugby shirts; Sweatshirts; T-shirts.”
Moreover, applicant’s goods are related to registrant’s goods because registrant uses broad wording to describe its goods, which presumably encompasses all goods of the type described, including applicant’s more narrow goods. For example, registrant’s broad identification of:
· “Caps” in its list of goods encompasses the following goods listed in applicant’s identification of goods: “Knitwear, namely,…caps”;
· “Sweatshirts” in its list of goods encompasses the following goods listed in applicant’s identification of goods: “Hooded sweatshirts for men and women; Sweatshirts for men and women”; and
· “Shorts” in its list of goods encompasses the following goods listed in applicant’s identification of goods: “Knitwear, namely,…shorts; Shorts for men and women”. 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, these goods of applicant and registrant 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)).
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)).
In summary, the marks are confusingly similar and the goods are related. Accordingly, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Assistance or Response Options:
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.
/Anna J. Oakes/
/Anna J. Oakes/
Examining Attorney
Law Office 103
571-272-2569
Anna.Oakes1@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.