To: | ZIP'D THREADS, INC. (ptomail@priceheneveld.com) |
Subject: | U.S. Trademark Application Serial No. 88371497 - SIC - YOC001 T300 |
Sent: | August 28, 2019 05:58:27 PM |
Sent As: | ecom119@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88371497
Mark: SIC
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Correspondence Address:
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Applicant: ZIP'D THREADS, INC.
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Reference/Docket No. YOC001 T300
Correspondence Email Address: |
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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: August 28, 2019
This Office action is in response to applicant’s communication filed on August 14, 2019. Registration No. 4279966 has been cancelled and will not be cited as a bar to registration.
Refusal to Register Made FINAL
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4876555. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
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.
Similarity of the Marks
In this case, the applicant seeks to register the mark SIC and design; the design consists of the stylization of the term SIC and a single star. The registered mark is the term [SIC].
The applicant argues that the marks are not “highly similar” pointing to the differences between the marks. This argument has been carefully considered, but is not persuasive. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). Thus, the side-by-side comparison of the applicant’s mark and the registrant’s mark in the response is not the proper test. The question is whether purchasers who encounter the applicant’s SIC mark and the registrant’s [SIC] mark will mistakenly believe that the marks come from a common source.
The argument that the star design is a significant difference is noted, but is not persuasive. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In this case, purchasers will not call for the goods by referencing the star design. Instead, they will refer to the literal term, which is legally identical to the term SIC in the registered mark.
Similarity of the Goods and Services
The applicant’s goods and services, as amended, are identified as follows:
Class 25: Consumer requested custom graphic designed clothing, namely, shirts, t shirts, sweatshirts, shorts, hooded sweatshirts, coats, jackets, pants and tops sold solely to the customer requesting the custom designed clothing; consumer requested custom graphic designed clothing for athletic use, namely, shirts, t-shirts, sweatshirts, shorts, hooded sweatshirts, coats, jackets, pants and tops sold solely to the customer requesting the custom designed clothing.
Class 42: Consumer requested custom graphic clothing design services.
The registrant’s goods are: boxer briefs; cardigans; hats; hooded sweatshirts; jackets; long-sleeved shirts; pants; shoes; shorts; socks; sweatshirts; t-shirts; tank tops; thermal underwear; tops.
The goods are confusingly similar because both identifications include sweatshirts, jackets, shirts, pants, shorts, and t-shirts. The addition of the wording “consumer requested custom graphic designed clothing” to the applicant’s mark does not obviate the likelihood of confusion. The fact that the applicant’s clothing is custom does not overcome the similarity of the goods, which are otherwise identical.
The applicant’s goods are also confusingly similar to clothing design services. Evidence was attached to the first Office action in the nature of representative third party registrations showing that the same mark is used on both clothing and clothing design services. Clearly, the applicant uses the mark on both clothing and clothing design, further evidencing the relatedness of the goods and services.
The applicant attempts to distinguish the goods and services, arguing that its goods are not sold in retail stores or online. It is noted that this application is based upon 1(b), intent-to-use. Thus, there is no requirement that the applicant show how the mark is being used in commerce at this time. However, the identification of goods and services does not contain a limitation regarding where the goods are sold or where the services are provided. The fact that they are custom-designed does not preclude their sale in a retail store or online.
Moreover, as shown in the attached printouts about the applicant’s brand, the applicant’s clothing also is made by a collection of individual artists, and presumably includes graphic design. See for example, the Kickstarter page identifying the renowned Art Center College of Design as the source of the apparel. Also attached is a specimen from the registrant’s application showing that the registrant’s clothing also features graphic designs.
In view of the similarity of the marks and the goods and services, the refusal to register is maintained and made FINAL.
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 response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Evanko, Patty
/Patty Evanko/
Patty Evanko
Law Office 119
571-272-9404
patty.evanko@gmail.com (informal questions only)
RESPONSE GUIDANCE