UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/30/2019

 

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.

 

SUMMARY OF ISSUES:

 

·       LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)

·       AMENDED IDENTIFICATION AND/OR CLASSIFICATION OF GOODS AND SERVICES REQUIRED

 

LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d)

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark WHAT TO WEAR in U.S. Registration No. 4245726 for a “software for maintenance of an individual's wardrobe and building online social communities built around wardrobe of members within the online community.”  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and services and similarity of the trade channels of the goods and services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of the Parties’ 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, the applicant’s mark WHAT2WEAR creates a similar commercial source impression to the cited registered mark WHAT TO WEAR because the marks consist of a phrase that uses the same words, namely, “WHAT” and “WEAR”, and connotes the same meaning.  Overall, the marks also sound the same. See attached evidence from http://www.merriam-webster.com/dictionary/  indicating that “two”, i.e., the number “2”, is pronounced as /tu/, just like the word “to.” The marks result in an essentially identical commercial impression, conveying one’s clothing options.

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987); TMEP §1207.01(b)(ii)-(iii). 

 

Relatedness of the Parties’ Goods and Services

 

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 registration covers “computer application software for mobile phones, tablets, and desktop computers, namely, software for maintenance of an individual's wardrobe and building online social communities built around wardrobe of members within the online community.” The application also covers a “software for closet and wardrobe management using real-time inventory.” The parties’ software technologies appear to overlap, in that both apparently involve wardrobe maintenance or management.  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these software technologies.  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)). 

 

Moreover, the registration covers a software for building online social communities and interacting with members of these communities in the field of fashion.  The application covers a number of other overlapping or highly related services.  For example, the proposed mark is also intended to be used for an online community and social networking in the field of fashion.  It also will allow users to get fashion trend consulting and information pertaining to fashion, including in the nature of personal fashion recommendations.  Finally, the registration covers advertising services, such as promotion of the goods and services of others.  These services are frequently provided by the same entity under the same mark through the same trade channels and to the same classes of consumers in the same fields of use.  See, for example, attached evidence showing http://fashiontap.com/ (a social networking site where users share looks, tag brands, and get information on fashion trends, that also features an application; also features advertising links to the websites of others), http://medium.com and http://www.facebook.com/appdressd/ (discussing Dress’d, a “social network devoted to fashion” where users can share their favorite looks and get inspiration, that also includes links to brand pages, all offered via a software application), and http://www.trendme.net/ (a social networking software and website which also allows users to share fashion inspiration, seek and obtain fashion advice, that offers advertising for fashion brands.) Thus, the parties’ goods and services are related. 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).

 

The compared goods and services 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 and/or services] 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). Such is the case here.

 

The attached evidence shows that consumers expect the parties’ goods and services to emanate from the same sources. Therefore, consumers encountering such similar marks for highly related goods and/or services are likely to confuse the marks and/or mistake the underlying sources of goods and/or services offered under the marks.  Registration is refused to prevent such confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. 

 

However, if applicant responds to the refusal, applicant must also address the following additional requirement.

 

AMENDED IDENTIFICATION AND/OR CLASSIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The identification of software in International Class 35 is misclassified, and must, for the above reason, be clarified and reclassified properly according to the above criteria depending on whether the software is a product or a service.

 

In International Class 42, the service of “providing web sites featuring information in the fields of or related to fashion” is misclassified.  The classification of a service of providing a website depends on the information provided on the website.  Given that fashion trend consulting is a Class 45 service, a change due to the restructuring of Class 42 following the 8^th edition of the Nice Agreement, a website that provides information in the field of fashion is also a class 45 service.

 

In International Class 45, applicant is advised to delete or modify the duplicate entry for “Fashion consulting services.”  See generally TMEP §§1402.01, 1402.01(a).  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant must also correct the punctuation in the identification to clarify the individual items in the list of Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  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.  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. 

 

Finally, in Class 45, applicant must clarify the wording “Online social networking services in the field of fashion, lifestyle, motivation, inspiration and self-improvement obtained through social media posting, and providing one or more links to third party retailers to provide additional options.”  In particular, the last phrase creates an ambiguity as to it suggests Class 35 advertising services, already covered by the application.

 

Applicant may adopt the following wording, which incorporates additional suggestions for clarity, if accurate: 

 

Class 9: {Clarify if downloadable or recorded} computer application software for desktop and portable computers, mobile phones and media players, namely, software for closet and wardrobe management using real-time inventory; {Clarify if downloadable or recorded} computer software for providing personal stylist services, namely, software for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desired 

 

Class 35: Advertising and marketing services; promoting the goods and services of others by providing online advertising and links to websites of others; advertising and marketing services, namely, promoting the goods and services of others; computer software for providing personal stylist services, namely, software for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desired 

 

Class 42:  Providing web sites featuring information in the fields of or related to fashion; Computer services, namely, creating an online community for users to participate in and initiate discussions and engage in social networking about fashion; creating an on-line community for registered users to participate in discussions, share feedback, form virtual communities, and engage in social networking; Providing temporary use of non-downloadable software, for desktop and portable computers and media players, for closet and wardrobe management using real-time inventory and for providing personal stylist services, namely, for evaluating the weather and the physical attributes, lifestyle, and fashion styles of others and recommending clothing and accessories to achieve the personal image desired 

 

Class 45: Providing online fashion questions to help users determine the style of clothing best suited to their individual needs and preferences; Fashion information; fashion coordination services for individuals; computerized clothing scanning for the purpose of clothing selection for fashion purposes; computerized shoe scanning and fitting of shoes for the purpose of shoe selection for fashion purposes; providing news and information in the field of fashion; fashion consulting services; fashion trend consulting services; personal fashion consulting services; color analysis for wardrobe and fashion selection; provision of a web site featuring information on fashion; Providing fashion consulting in the nature of personalized fashion suggestions on apparel, footwear, bags, leather goods, jewelry, watches, toiletries, fragrances and eyewear via a website; providing an online searchable computer database in the field of personal fashion consulting services with respect to fashion products and merchandise, namely, aiding a consumer in choosing fashion products likely to appeal to them; Online social networking services in the field of fashion, lifestyle, motivation, inspiration and self-improvement obtained through social media posting, and providing one or more links to third party retailers to provide additional options; Fashion consulting services; providing information concerning fashion; personal stylist services, namely, evaluating the fashion styles of others and recommending clothing and accessories; online social networking services provided through a fashion community website; Providing fashion consulting based on season, size, health of clothing and condition of the clothing; Providing fashion consulting for donation or consignment opportunities; Providing fashion consulting based on seasons and storage; Providing web sites featuring information in the field of or related to fashion trends

 

The applicant should also note the following when amending the identifications:

 

• Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b). 

 

• Moreover, the scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e). 

 

• For guidance on writing identifications of goods and services and classifying them properly, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §§70203(a)(iv), 1402.04.

 

ASSISTANCE

 

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.  

 

 

 

/Valeriya Painter/

Examining Attorney

Law Office 121

(571) 270-7132

valeriya.painter@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/30/2019 FOR U.S. APPLICATION SERIAL NO. 88373537

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/30/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.