To: | Brown, Matthew (uspto@trademarks411.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88364138 - RITUAL TATTOO - N/A |
Sent: | 6/18/2019 5:56:40 PM |
Sent As: | ECOM125@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88364138
MARK: RITUAL TATTOO
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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: Brown, Matthew
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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: 6/18/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
· SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
· CLASSIFICATION AND IDENTICATION OF GOODS AND SERVICES
· DISCLAIMER REQUIRED
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is RITUAL TATTOO for, in relevant part, “clothing merchandise” in International Class 44.
The cited registrations are:
3933761: RITUALS, in illustrated drawing, for, in relevant part, “Clothing, namely, shirts, blouses, tops, t-shirts, coats, jackets, underwear, undershirts, pajamas, bathrobes, sweatshirts, shorts; headgear, namely, hats and caps” in International Class 25.
4340365: RITUALS, in standard characters, for, in relevant part, “Clothing, namely, shirts, blouses, tops, t-shirts, coats, jackets, skirts, dresses, underwear, undershirts, bathing suits, bathing trunks, pajamas, bathrobes, sweatshirts, shorts; footwear; headgear, namely, hats and caps” in International Class 25.
4792368: RITUALS…, in standard characters, for, in relevant part, “Clothing, namely, shirts, blouses, tops, t-shirts, coats, jackets, skirts, dresses, underwear, undershirts, bathing suits, bathing trunks, pajamas, bathrobes, sweatshirts, shorts; footwear; headgear, namely, hats and caps” in International Class 25.
4792395: RITUALS…, in illustrated drawing, for, in relevant part, “Clothing, namely, shirts, blouses, tops, t-shirts, coats, jackets, skirts, dresses, underwear, undershirts, bathing suits, bathing trunks, pajamas, bathrobes, sweatshirts, shorts; footwear; headgear, namely, hats and caps” in International Class 25.
Please note that the marks identified above are owned by a common owner.
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 [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
Comparison 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).
Here, applicant’s mark RITUAL TATTOO shares the identical first term “RITUAL” with that of registrant’s marks. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.
Comparison of Goods
In this case, the application uses broad wording to describe “clothing merchandise”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Clothing, namely, shirts, blouses, tops, t-shirts, coats, jackets, skirts, dresses, underwear, undershirts, bathing suits, bathing trunks, pajamas, bathrobes, sweatshirts, shorts; footwear; headgear, namely, hats and caps”. 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)).
Therefore, applicant’s and 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).
Because the applicant’s applied-for mark and the registered mark are similar and the goods are related, registration is refused for a likelihood of confusion under Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant should also note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is RITUAL TATTOO for “Tattoo services, clothing merchandise, posters, artwork, business paraphernalia” in International Class 44.
As shown in the attached evidence from websites of various third parties, the wording “RITUAL TATTOO” is commonly used in the marketplace to refer to tattoo-related services which are performed as a spiritual or religious task, or as part of one’s cultural heritage.
Here, applicant’s mark RITUAL TATTOO is merely descriptive of applicant’s tattoo services because consumers are not likely to encounter the mark and believe applicant is the source of the services.
As a result, the mark is merely descriptive, therefore registration of the mark is refused under Section 2(e)(1) of the Trademark Act.
Applicant is advised that amending the goods and services, as set forth herein, may obviate this refusal for certain goods and/or services listed in the application.
ADVISORY: MARK MAY BE GENERIC IN INTERNATIONAL CLASS 44
ADVISORY: SUPPLEMENTAL REGISTER NOT AVAILABLE IN 1(b) APPLICATIONS
CLASSIFICATION AND IDENTICIATION OF GOODS AND SERVICES
Applicant has applied for RITUAL TATTOO for “Tattoo services, clothing merchandise, posters, artwork, business paraphernalia” in International Class 44.
Applicant has classified the following goods and/or services in International Class 44: “clothing merchandise, posters, artwork, business paraphernalia.” However, the proper classification for each item is as follows: “clothing merchandise” may be in Class 25 or Class 35, “posters” are in Class 16, artwork may be in classes 16 or 41, and “business paraphernalia” is classified in accordance with each item to be specified, as further discussed below.
Additionally, applicant has provided the application fee(s) for only 1 international class. Thus, not all international classes in the application are covered by the application fee. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
The wording “clothing merchandise” in the identification of goods is incorrectly classified in International Class 44 and must also be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, this wording could encompass “clothing, namely, t-shirts” in Class 25 and “retail store services featuring clothing” in Class 35.
The wording “artwork” in the identification of goods is incorrectly classified in International Class 44 and must also be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, this wording could encompass “artwork in the nature of art prints” in Class 16 and “custom painting of artwork for others” in Class 41.
Applicant may substitute the following wording, if accurate:
Class 16: “Posters; artwork in the nature of art prints; business paraphernalia in the nature of _____ {specify items in Class 16, e.g., stickers, pens, etc.}”
Class 25: “Clothing merchandise, namely, _____ {specify clothing items in Class 25, e.g., t-shirts, pants, etc.}”
Class 35: “Retail store services featuring clothing”;
Class 41: “Custom painting of artwork for others”;
Class 42: “Tattoo design services”
Class 44: “Tattooing services, clothing merchandise, posters, artwork,
business paraphernalia”
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.
MULTI-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “TATTOO” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster online dictionary shows this wording means “an indelible mark or figure fixed upon the body by insertion of pigment under the skin or by production of scars” as well as “the act of tattooing”. Thus, the wording merely describes applicant’s tattoo services, as listed in the identification of goods and services.
Applicant is advised that amendment of the goods and services, as discussed herein, may or may not require amendment to the disclaimer requirement.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “TATTOO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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.
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.
/Katie Foss/
Trademark Examining Attorney
Law Office 125
571-272-4067
katherine.foss@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.