Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  December 09, 2019

 

INTRODUCTION TO PARTIAL FINAL REFUSAL

 

This responds to the applicant’s submission of November 18, 2019 in response to an Office action issued May 17, 2019 in which the examining attorney: 1) refused registration under 15 U.S.C. Section 1052(d) because of a likelihood of confusion with the marks in U.S. Registration Nos. 4791557, 4542218 and 5075783; 2) required deletion of the disclaimer statement; and 3) required an amended description of goods and services. The response is acceptable as to items 2) and 3) in full and item 1) in part. The deletion of the disclaimer and amended description of goods/services are acceptable and these requirements have been satisfied. The Section 2(d) refusal is withdrawn as to U.S. Registration No. 4791557.

 

The examining attorney has carefully considered the applicant’s arguments in favor of registration over the other two cited registrations but has found them to be unpersuasive. Therefore, the Section 2(d) refusal is hereby continued and made FINAL as to U.S. Registration Nos. 5652218 and 5075783 as to Classes 9, 25 and 41.

 

 

Summary of Refusals and/or Requirements

 

The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.

 

n  Section 2(d) refusal as to U.S. Registration Nos. 5652218 and 5075783 as to Classes 9, 25 and 41

 

 

LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark was and remains refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4542218 and 5075783.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  This refusal is maintained and made final as to Classes 9, 25 and 41.

 

The applicant seeks to register CHALK in stylized form for the following goods and services to which this refusal pertains:

 

Class 9:           Downloadable computer application software for handheld devices, namely, software for playing sports games, obtaining and sharing sports information, and viewing sports instruction downloadable and playable on a handheld device.

 

Class 25:         Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bandanas; Bathing suits; Bathrobes; Beachwear; Belts; Body suits; Boots; Bow ties; Caps being headwear; Coats; Dresses; Ear muffs; Garter belts; Gloves; Gym suits; Hats; Head wear; Headbands; Hoods; Hosiery; Jackets; Jeans; Jumpsuits; Kerchiefs; Leggings; Leotards; Lingerie; Mittens; Money belts; Neckties; Overalls; Pajamas; Pants; Parkas; Robes; Scarves; Shirts; Shoes; Shorts; Skirts; Sleepwear; Socks; Sport shirts; Sweat bands; Sweat pants; Sweaters; Swimsuits; T-shirts; Tank tops; Tops as clothing; Tracksuits; Tuxedos; Underwear; Vests; Visors being headwear; Wrist bands as clothing; Swimming caps.

 

Class 41:           Providing a website featuring entertainment information; Providing an Internet website portal featuring entertainment news and information specifically in the field of sports, politics and lifestyle.

 

 

The registered marks are:

 

U.S. Registration No. 4542218 CHALK NYC (NYC disclaimed) for belts; blazers; blouses; boots; cardigans; denims; dresses; gloves; hats; jackets; jeans; leggings; lingerie; one-piece garments for children; overalls; pants; scarfs; shirts; shoes; skirts; sleepwear; slippers; socks; sport coats; stockings; sweaters; sweatshirts; t-shirts; tights; tops; undergarments, in Class 25

 

U.S. Registration No. 5075783 CHALK with minor stylization for computer game software; downloadable mobile applications for online games, in Class 9, and for online entertainment services in the form of fantasy sports leagues; entertainment services consisting of a web-based system and an online portal so that customers can participate in online games, operation and coordination of fantasy sports leagues and game tournaments, in Class 41.

 

The Marks are Highly Similar

 

The applicant argues that the “uses, pronunciation, relationship and function of the marks are not similar,” yet fails to articulate or provide any evidence showing how the term CHALK in each mark differs in these ways.  Resp. at 5. 

 

In support of this position, the applicant states that its mark “appears on Applicant’s website…and YouTube channel,” while “U.S. Registration No. 5075783 CHALK does not have a web presence here in the U.S. nor does its Facebook page actively display the mark CHALK.”  Resp. at 5.  These assertions go to the method of use of the respective marks, and not to their similarities.  Therefore, these arguments are not dispositive in light of the fact that the dominant element of these marks is the word CHALK. 

 

As to U.S. Registration No. 4542218, the applicant’s statement that “CHALK NYC and CHALK” depiction differs from that of the Applicant while the goods and services are also not similar” provides no clear argument or evidence as to how CHALK NYC and CHALK create different commercial impressions. Given that NYC is a geographic term that was disclaimed in the CHALK NYC registration, the marks remain highly similar with very similar commercial impressions.

 

The Trademark Trial and Appeal Board has held hunting and fishing goods to be “closely related” goods for the purposes of assessing likelihood of confusion.  See In re Buck Stop Lure Co., 226 USPQ2d 190, 191-92 (TTAB 1985) (training scents for hunting dogs related to fishing rods); In re New Archery Prods. Corp., 218 USPQ 670, 671-72 (TTAB 1983) (arrowheads related to fishing lures).

 

 

The Goods and Services are Identical, and Highly Similar

 

U.S. Registration No. 4542218

 

The goods of the parties are identical in that the applicant’s goods are broad enough to include the registrant’s goods. Determining likelihood of confusion is based on the description of the goods and/or services 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)).  

 

The goods are identical as to most items, such as jeans, dresses, gloves, hats, pants, scarves and skirts.  Moreover, in this case, the application uses broad wording to describe footwear, shirts, sleepwear, sweaters and pants, which presumably encompasses all goods of the type described, including registrant’s more narrow one-piece garments for children, overalls, blazers, cardigans and tights.  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)).

 

Additionally, the goods and/or services 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, applicant’s and registrant’s goods and/or services are related.

 

The applicant maintains that “CHALK NYC” is used in connection with a children’s clothes retailer completely unrelated to sports or entertainment. In addition, the connotation of the term ‘CHALK’ in connection with CHALK NYC is that of a piece of chalk used on a chalkboard by schoolchildren.” Resp. at 3.  The applicant’s sleepwear and pajamas are broad enough to encompass the registrant’s one-piece garments for children. None of the other garments in the registration are limited to children’s use.

 

The applicant cannot limit the CHALK NYC registration only to a “children’s clothes retailer” because the registrant did not so limit the identification of goods in its registration.  When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the Class 25 goods in the application and registration(s) are identical.  The applicant has failed to provide any evidence to support its position that the goods are different.  Neither the applicant nor the registrant has limited the trade channels or intended classes of consumers to athletes, children or any other group or intended use.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

U.S. Registration No. 5075783

 

The applicant indicated that its founder is “Chris Long, a retired professional football player with approximately 1,000,000 social media followers across Twitter and Instagram,” and that it is a “digital media network that will be distributing video, audio, and written content across multiple digital platforms,” that “will cover several topics and stories and create content geared around sports, politics and entertainment….”  Resp. at 2.  As noted above, the Section 2(d) analysis is based on the identification of goods and services, and not on extrinsic evidence of actual use.

 

In this case, both the applicant and registrant intend to use or use the respective marks for downloadable software and applications for playing games. The registrant’s identification of “downloadable mobile applications for online games” and “computer game software” is broad enough to encompass the applicant’s downloadable software for playing “sports games.”  The fact that the applicant will be associated with a digital media network that engages in a variety of activities does not change this analysis.

 

Further, the applicant’s website featuring entertainment information and portal featuring entertainment news and entertainment in the field of sports are broad enough to include provision of entertainment information about the same subject matter as the registrant’s online fantasy sports leagues and online portal that enables users to play online games and operation fantasy sports leagues.  The applicant has failed to provide arguments or evidence to distinguish them.  

 

The applicant further maintains that the registrant does not “appear to have a presence in the U.S.,” and therefore, the “circumstances surrounding their marketing [does not] give rise to the mistaken belief that [the goods and/or services] emanate from the same source…Applicant is a prominent, well-known U.S. athlete who participated in a sport which is only played in North America. It is unlikely that a consumer would be confused as to the source of the goods and services.” Resp. at 5.

 

The fact that the cited registrant is domiciled in a foreign country does not devalue the force of its U.S. registration, nor does it minimize the likelihood of confusion as to source. The attached websites show that football games are played in Europe, and around the globe, are heavily promoted to European fans, and that Mr. Long is recognized outside the U.S. for his philanthropic efforts, along with this outstanding play and leadership skills in football.  See http://www.nbcsports.com/philadelphia/eagles/eagles-play-london-2018-jaguars, http://www.nfl.com/news/story/0ap3000000981459/article/four-nfl-london-games-to-be-played-in-2019, http://en.wikipedia.org/wiki/List_of_National_Football_League_games_played_outside_the_United_States and    http://www.europenowjournal.org/2018/12/10/water-advocacy-philanthropy-and-professional-football-an-interview-with-chris-long/.  

 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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, 1026 (Fed. Cir. 1988).

 

Since the marks share the same common, dominant term in the word CHALK, and the goods/services are either identical or closely related, consumers are likely to believe that the goods/services come from the same source in the marketplace. Therefore, the Section 2(d) refusal is maintained and made final as outlined herein.

 

 

Response Options – Partial Abandonment Advisory:

 

 If applicant does not timely respond within six months of the issue date of this final Office action, then following goods/services and/or class[es] to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  all listed goods and services in Classes 9, 25 and 41.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and/or services/class(es)  only:  all services included in Class 35. 

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)          A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)          An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

Please 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 refusal(s) and/or requirement(s) 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.  

 

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).

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 09, 2019 for

U.S. Trademark Application Serial No. 88354813

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”