To: | Punita Group Inc., (chyra@symbus.com) |
Subject: | U.S. Trademark Application Serial No. 88412374 - BLUE RIDGE SPORTS - 7119-162 |
Sent: | July 17, 2019 09:40:58 AM |
Sent As: | ecom105@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 Attachment - 30 Attachment - 31 Attachment - 32 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88412374
Mark: BLUE RIDGE SPORTS
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Correspondence Address: 11710 PLAZA AMERICA DRIVE SUITE 2000
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Applicant: Punita Group Inc.,
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Reference/Docket No. 7119-162
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 17, 2019
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.
LIKELIHOOD OF CONFUSION:
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 and/or services 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 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.
Applicant’s mark is BLUE RIDGE SPORTS for “Exercise equipment, namely, resistance bands, hand grip exercisers, mesh waist band trainers, and massage rollers; Jump ropes”.
The cited marks are:
BLUE RIDGE MOUNTAIN SPORTS for “Retail and online retail store services featuring sporting goods, backpacks, sleeping bags, tents, hiking and camping accessories, kayaks, canoes, rock climbing equipment and accessories, and clothing and athletic apparel, namely, coats, jackets, vests, underwear, dresses, skirts, base layers, sweatshirts, shirts, pants, gloves, hats, and shoes.” (Reg. No. 4944329).
“BLUE RIDGE” in capital letters, “mountain sports brms.com” in lower case letters with a dot between "mountain sports" and "brms.com", all letters in black and outlined in white, an oval design in dark blue outlined in light blue, inside the oval design are mountain designs in light blue. The services are for “retail and online retail store services featuring sporting goods, backpacks, sleeping bags, tents, hiking and camping accessories, kayaks, canoes, rock climbing equipment and accessories, and clothing and athletic apparel, namely, coats, jackets, vests, underwear, dresses, skirts, base layers, sweatshirts, shirts, pants, gloves, hats, and shoes.” (Reg. No. 4802024).
Both registrations are owned by Blue Ridge Mountain Sports, Ltd.
Applicant’s and registrant’s marks are highly similar. Both feature the identical literal element BLUE RIDGE.
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording SPORTS in the applied-for mark is merely descriptive of or generic for applicant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording BLUE RIDGE the more dominant element of the mark.
Disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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). Reg. Nos. 4944329 & 4802024 have disclaimed SPORTS.
The goods and services of the respective parties are closely related. Registrant’s ID includes the broad wording “sporting goods”. “Sporting goods” means “sport equipment sold as a commodity”. See attachments from <http://www.vocabulary.com/dictionary/sporting%20goods>.
For the reasons discussed above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
DISCLAIMER OF “SPORTS” REQUIRED:
Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “SPORTS” because it is not inherently distinctive. This unregistrable term at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. 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).
“Sport” means “an activity involving physical exertion and skill that is governed by a set of rules or customs and often undertaken competitively.” See attachments from <http://www.ahdictionary.com/word/search.html?q=sport>.
SPORTS immediately conveys to consumers that applicant’s products are used in connection with activities involving physical exertion and skill that is governed by a set of rules or customs and often undertaken competitively.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SPORTS” 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.
IDENTIFICATION OF GOODS:
Class 28 -
In Class 28, applicant’s identification is: “Exercise equipment, namely, resistance bands, hand grip exercisers, mesh waist band trainers, and massage rollers; Jump ropes.”
The following wording is unacceptable:
“Hand grip exercisers” is indefinite. More specificity is required. In Class 28, the hand grip exercisers must be for non-medical purposes. See below for suggestion.
“Mesh waist band trainers” is indefinite. More specificity is required. See below for suggestion.
“Massage rollers” is indefinite and misclassified. Foam massage rollers belong in Class 10. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 10: Manually-operated resistance bands for physical therapy purposes; foam massage rollers
Class 25: Mesh waistband trainers in the nature of waist cinchers and shapewear
Class 28: Exercise equipment, namely, resistance exercise bands, hand grip exercisers for non-medical purposes; Jump ropes
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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 REQUIREMENTS:
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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods that are classified in at least 3 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FEES FOR ADDITIONAL CLASSES:
The fee for adding classes to a TEAS Plus application through TEAS is $225 per class. See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04. See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE