UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88367329
MARK: ZION
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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: Dorothy Cooper
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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
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL
In this case, applicant has applied to register the mark “ZION” for use in connection with “GandS: Clothing for men, women and children; namely, exercise wear, warm up suits, jogging suits, sweat suits, sweat pants and sweatshirts, bodysuits, leotards, leg warmers, swimwear, bathing suits, beach and bathing cover ups, suits, slacks, trousers, pants, jeans, shorts, sweat shorts, gym shorts, tops, jackets, coats, sport coats, shirts, sport shirts, T-shirts, knit shirts, polo shirts, pullovers, sweaters, vests, tank tops, blazers, jumpsuits, playsuits, overcoats, parkas, wind resistant jackets, leather jackets, footwear, shoes, boots, slippers, athletic footwear, basketball shoes, casual footwear, sandals, headwear, hats, caps, visors, hoods, berets. Headbands, sweatbands, wristbands, ear muffs, neckwear, neckties, scarves, bandannas, sleepwear, robes, pajamas, nightshirts, rainwear, gloves, mittens, galoshes, loungewear, underwear, briefs, underpants, boxershirts, undershirts, suspenders, hosiery, socks, belts, sweat shirts, and masquerade.”
The mark in Registration No. 5198825 is “ZION JUDIACA” used in connection with “, in pertinent part, “Kippahs; Prayer Shawls; Socks; T-shirts; Hats; Fur hats; Footwear; Coats; Gloves; Mittens; Aprons; Baby bibs not of paper; Caps; Tzitzis, namely, string fasteners for Jewish religious clothing,” among other goods.
Introduction to Section 2(d) Analysis
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 and differences in the marks.”); TMEP §1207.01.
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).
Here, applicant’s mark, “ZION”, is confusingly similar to the registered mark, “ZION JUDIACA”, in sound, appearance, and overall commercial impression. Specifically, the marks sound and appear similar in that they begin with the identical term “ZION”. 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”). Thus, the marks sound and appear similar in that consumer will focus on the term “ZION” in each of the marks as the first term in the respective marks.
The marks also share the same overall commercial impression. Specifically, the term “ZION” is a given name meaning “the ideal nation or society envisaged by Judaism. See http://www.merriam-webster.com/dictionary/Zion and http://www.wordnik.com/words/Zion. Thus, both marks conveys the same overall impression of a name that references the ideal nation envisaged by Judaism.
Additionally, though the registered mark contains the added term “JUDIACA”, this added term does not obviate the similarities of the marks as a descriptive term that has been disclaimed by registrant. 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 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). Therefore, “JUDIACA” is less significant because consumers will immediately recognize that the term conveys information about registrant’s goods, rather than view this term as a source-identifying term. Consequently, consumers will focus on “ZION” in registrant’s mark.
Ultimately, when purchasers call for the goods of applicant and registrant using “ZION” and “ZION JUDIACA”, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods
In this case, both the application and registration identify the following goods which are identical: “Socks; T-shirts; Hats; Footwear; Coats; Gloves; Mittens; Caps.” Next, applicant’s identification “tops, headwear” is broad and presumably encompasses all goods of the type described, including registrant’s more narrow “t-shirts, hats”. 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). Conversely, registrant’s broad identifications “Hats; Footwear; T-shirts, socks ” broadly encompasses applicant’s more narrow “shoes, boots, slippers, athletic footwear, basketball shoes, casual footwear, sandals, galoshes, caps, visors, hoods, berets, undershirts, hosiery.” Id. 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 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 are related.
The attached evidence establishes that goods similar to the parties’ respective goods frequently travel in the same channels of trade, and are offered to the same class of class of consumers in the same field of use. Additionally, the evidence demonstrates that consumers are accustomed to seeing businesses offer a wide variety of clothing articles, including the parties’ specified goods, under the same mark. As a result, consumers encountering applicant’s and registrant’s respective goods at the same time are likely to mistakenly presume the goods originate from the same source because of the relationship between the goods. Consequently, applicant’s and registrant’s respective goods are closely related under the likelihood of confusion analysis.
See Registration Nos. 4960491, 5697643, 5559587, 5384511, 5570580, 5753381, 5593947, 5476674, 5167866, and 4994489.
This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Accordingly, 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); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).]
Ultimately, because the marks are confusingly similar and the goods are closely related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. Therefore, registration must be refused under Section 2(d).
Response to Section 2(d) – Likelihood of Confusion Refusal
ADVISORY: POTENTIAL SECTION 2(d) REFUSAL – TWO PRIOR PENDING APPLICATIONS
The filing date of pending U.S. Application Serial Nos. 87893440 and 87711935 precede applicant’s filing date. See attached referenced applications. If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to this Office Action within six months of the mailing date to avoid abandonment.
REQUIREMENTS
IDENTIFICATION OF GOODS OVERLY BROAD AND INDEFINITE - CLARIFICATION AND AMENDMENT REQUIRED
It appears a number of the identifications are indefinite because the identification uses improper punctuation. Specifically, the identification “Clothing for men, women and children; namely, exercise wear, warm up suits,…” contains improper punctuation in that a semi-colon appears between “children” and “namely”, when a comma should have been used. Therefore, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id. As such, the amendment below is suggested.
Similarly, the following portion of the identification “…sandals, headwear, hats, caps, visors, hoods, berets. Headbands…” is indefinite because a semi-colon should appear after “sandals” and after “berets” for the reasons explained above.
The identification “exercise wear” is indefinite and must be clarified because applicant must specify the particular exercise wear that it offers for the identification to be acceptably definite (e.g. pants, shirts, bras, shorts). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The underlined wording in the identification “headwear, hats, caps, visors, hoods, berets.” is overly broad in that it could include goods in other international classes because the identification is written such that “caps” and
“visors” are not clarified as types of “headwear” in the nature of fashion clothing rather than as
“surgical caps” in Class 10 for medical clothing and “visors for helmets” in Class 9 for safety equipment, to provide a couple of examples. See 37 C.F.R.
§2.32(a)(6); TMEP §§1402.01, 1402.03. Therefore, the identification must be amended to clarify the goods are in the nature of “headwear” as provided below.
Alternatively, if applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Proper classification of goods is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
The underlined wording in the identification “wristbands” is overly broad in that it could include goods in other international classes such as “Anti-nausea wristbands” in Class 10 for medical equipment, to provide a couple of examples. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Therefore, the identification must be amended to clarify the particular goods offered, and classify the goods accordingly.
The underlined wording in the identification “masquerade” is overly broad in that it could include goods in other international classes such as “masquerade costumes” in Class 25 for fashion clothing, including fashion costumes, and “masquerade masks” in Class 28 for goods in the nature of toys, to provide a couple of examples. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Therefore, the identification must be amended to clarify the particular goods offered, and classify the goods accordingly.
Applicant may adopt the following identification of goods, if accurate:
Class 9 –
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“Visors for helmets.” |
Class 10 –
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“Surgical caps; Anti-nausea wristbands” |
Class 25 –
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“Clothing for men, women and children, namely, exercise wear, namely, warm up suits, jogging suits, sweat suits, sweat pants and sweatshirts, and bodysuits, leotards, leg warmers, swimwear, bathing suits, beach and bathing cover ups, suits, slacks, trousers, pants, jeans, shorts, sweat shorts, gym shorts, tops, jackets, coats, sport coats, shirts, sport shirts, T-shirts, knit shirts, polo shirts, pullovers, sweaters, vests, tank tops, blazers, jumpsuits, playsuits, overcoats, parkas, wind resistant jackets, leather jackets, footwear, shoes, boots, slippers, athletic footwear, basketball shoes, casual footwear, sandals; Headwear, namely, hats, caps, visors, hoods, berets; Headbands, sweatbands, wristbands as clothing, ear muffs, neckwear, neckties, scarves, bandanas, sleepwear, robes, pajamas, nightshirts, rainwear, gloves, mittens, galoshes, loungewear, underwear, briefs, underpants, boxer shorts, undershirts, suspenders, hosiery, socks, belts, sweat shirts, and masquerade costumes.”
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Class 28 –
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“Masquerade masks.” |
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Additions to the Identification Not Permitted
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
REQUIREMENT TO CLARIFY THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods that may be classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY: Multiple-Class Application Requirements for a Section 1(b) Filing Basis
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods 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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee 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.
FILING FEES FOR ADDED CLASSES
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
Applicant should file a response online using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms.
If applicant requires technical assistance in using the online response form, applicant may email TEAS@uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action.
/Tiffany Y. Chiang/
Trademark Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@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.