Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

FINAL OFFICE ACTION

 

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:  February 11, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 18, 2020.

 

In a previous Office action dated July 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The refusal under Trademark Act Section 2(d) is now made FINALwith respect to the marks “FAITHWORKS DESIGNS” and “FAITHWORKS APPAREL” in U.S. Registration Nos. 3042658 and 5187535.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). See previously attached registration.

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant’s mark is “FAITHWORKS” for “Retail on-line ordering services featuring religious items, namely, books, cards, bible accessories, crosses, crucifixes, devotional gifts, inspirational gifts, jewelry, sacraments, seasonal items, wall and home décor also accessible by telephone, facsimile and mail order” within Class 035.

 

The registered marks are:

·       “FAITHWORKS DESIGNS” for “Christmas tree ornaments” within Class 028.

·       “FAITHWORKS APPAREL” for “Body shirts; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Button down shirts; Capri pants; Collared shirts; Crew neck sweaters; Crop pants; Dance pants; Denims; Dress pants; Dress shirts; Dress suits; Dresses; Evening dresses; Fashion hats; Graphic T-shirts; Gym pants; Hat bands; Hats; Hats for infants, babies, toddlers and children; Hooded sweat shirts; Jogging pants; Jumper dresses; Knit dresses; Knit shirts; Knit skirts; Leather hats; Leather pants; Leather shirts; Leather skirts; Long-sleeved shirts; Men's dress socks; Mock turtle-neck sweaters; Night shirts; Open-necked shirts; Over shirts; Pants; Polo shirts; Rain hats; Shirts for infants, babies, toddlers and children; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Skirt suits; Skirts; Skirts and dresses; Sleep pants; Sleep shirts; Sport shirts; Sports caps and hats; Sports pants; Stretch pants; Sweat pants; Sweat shirts; Sweaters; T-shirts; Tee shirts; Turtle neck shirts; Turtleneck sweaters; V-neck sweaters; Women's clothing, namely, shirts, dresses, skirts, blouses” within Class 025.

 

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.

 

In this case, both of the key considerations are met: the marks are confusingly similar and the goods and/or services are related for likelihood of confusion purposes.

 

Similarities of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is “FAITHWORKS” and registrants’ mark are “FAITHWORKS DESIGNS” and “FAITHWORKS APPAREL”. 

 

Applicant suggests that since registrants’ marks coexist peacefully and contain additional wording, applicant’s mark should be registered as well. However, the applied-for mark does not contain additional wording to differentiate itself from the registered marks. Therefore, it is likely that consumers that have encountered any or both of registrants’ marks will associate applicant’s mark with one or both of these registered sources. Most importantly, registrants’ marks co-exist because they identify goods that are not similar, commercially related, or travel in the same trade channels. When a mark identifies goods or services that are not related to those identified by a similar mark, the degree of similarity needed to support a finding of likelihood of confusion with the similar mark increases. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).  

 

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 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). The cited registrations contain disclaimers for the descriptive words “DESIGNS” and “APPAREL”, respectively. Thus, the most significant part of the registered marks is identical to the applied-for mark: “FAITHWORKS”.

 

Consumers encountering applicant’s mark and one of registrant’s marks would perceive the wording “FAITHWORKS” to be the house mark for the identified goods and/or services. Here, those already familiar with registered mark “FAITHWORKS DESIGNS” or “FAITHWORKS APPAREL” in connection with their goods, upon encountering applicant’s mark, they could easily assume that “FAITHWORKS” is a house mark and that “FAITHWORKS DESIGNS” or “FAITHWORKS APPAREL” are merely full versions of the respective mark. Thus, it is likely that goods and/or services sold under applicant’s mark would be attributed to one of the registered sources.  See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007).  Accordingly, in the present case, deleting the wordings “DESIGNS” or “APPAREL” after “FAITHWORKS” does not obviate a finding of likelihood of confusion with “FAITHWORKS DESIGNS” or “FAITHWORKS APPAREL” since the marks in their entireties evoke a similar commercial impression.

 

Therefore, the applied-for mark is confusingly similar to the registered marks. 

 

Relatedness of the Goods and Services

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  Therefore, information or evidence provided by applicant to demonstrate registrants’ use of the marks in commerce is not relevant.

 

To show that applicant’s services are not related, it states that its “goods are not marketed to the same class of purchasers or through the same marketing channels. […] [They] are typically marketed through independent sellers and at trade shows. Orders are then submitted on Applicant’s website by the independent sellers, telephone or facsimile.”

 

The applied-for mark identifies “Retail on-line ordering services featuring religious items, namely, books, cards, bible accessories, crosses, crucifixes, devotional gifts, inspirational gifts, jewelry, sacraments, seasonal items, wall and home décor also accessible by telephone, facsimile and mail order” within Class 025.

 

The registered mark “FAITHWORKS DESIGNS” identifies “Christmas tree ornaments” within Class 028.

 

The registered mark “FAITHWORKS APPAREL” identifies “Body shirts; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Button down shirts; Capri pants; Collared shirts; Crew neck sweaters; Crop pants; Dance pants; Denims; Dress pants; Dress shirts; Dress suits; Dresses; Evening dresses; Fashion hats; Graphic T-shirts; Gym pants; Hat bands; Hats; Hats for infants, babies, toddlers and children; Hooded sweat shirts; Jogging pants; Jumper dresses; Knit dresses; Knit shirts; Knit skirts; Leather hats; Leather pants; Leather shirts; Leather skirts; Long-sleeved shirts; Men's dress socks; Mock turtle-neck sweaters; Night shirts; Open-necked shirts; Over shirts; Pants; Polo shirts; Rain hats; Shirts for infants, babies, toddlers and children; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Skirt suits; Skirts; Skirts and dresses; Sleep pants; Sleep shirts; Sport shirts; Sports caps and hats; Sports pants; Stretch pants; Sweat pants; Sweat shirts; Sweaters; T-shirts; Tee shirts; Turtle neck shirts; Turtleneck sweaters; V-neck sweaters; Women's clothing, namely, shirts, dresses, skirts, blouses” within Class 025.

 

The presumption under Trademark Act Section 7(b) is that registrants are the owners of their respective marks and that their use of the marks extends to all goods identified in the registration.  15 U.S.C. §1057(b).  In the absence of limitations as to channels of trade or classes of purchasers in the goods in the registrations, as in registrants’ cases, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services, – including the limited channels through which applicant claims that its services are rendered – and are available to all potential classes of ordinary consumers of such goods and/or services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).

 

Applicant must also note that while it claims that its trade channels are limited, arguing that “[t]he general public cannot simply order from Applicant’s website like the retail websites submitted as evidence by Examining Attorney”, and that the orders are only submitted by independent sellers, its identification of services does not actually limit the identified “Retail on-line ordering services”, nor does it limit its type of purchasers. But, applicant’s identification is for “Retail on-line ordering services featuring religious items, namely, books, cards, bible accessories, crosses, crucifixes, devotional gifts, inspirational gifts, jewelry, sacraments, seasonal items, wall and home décor also accessible by telephone, facsimile and mail order”. Here, the word “also” before the words “accessible by telephone, facsimile and mail order” indicates that applicant’s services are available either by simply ordering through applicant’s online retail store or, in the alternative, by telephone, facsimile and mail order.

 

Further, applicant claims that its first use of the applied-for mark is at an earlier date in comparison with the registered marks. Regardless, applicant’s claim of priority of use is not relevant to this ex parte proceeding.  See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).  Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods specified in the certificate.  During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration.  TMEP §1207.01(d)(iv).

 

Moreover, applicant argues that the applied-for mark and the registered marks have coexisted peacefully “for several years with no evidence of actual confusion”. But, “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).

 

As stated in the action before, the compared goods and/or 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).

 

While applicant claimed that the provided evidence to show the relatedness of the goods and services only included retail websites from which consumers may simply order, applicant’s identification of services in fact also identifies an online retail store website through which customers may simply purchase the featured religious goods, as indicated above.

 

The previously attached Internet evidence, consisting of industry samples from Autom, Bronner’s, Oriental Trading, Wayfair, Cost Plus World Market, Catholic Supply, St. Jude, Religious Supply Center and The Catholic Company, and the newly attached evidence from Cracker Barrel, EWTN, and Direct From Lourdes establishes regarding applicant’s retail online ordering services and registrants’ ornaments and clothing that:

(1)   the same entity commonly manufactures, produces, provides the relevant goods and/or services and markets the goods and/or services under the same mark

(2)   the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and

(3)   the goods and/or services are similar or complementary in terms of purpose or function. 

Thus, applicant’s and registrant’s goods and/or services 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).

 

Lastly, the greater degree of similarity between the applied-for mark and the registered mark(s), as in this case, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Therefore, the refusal under Section 2(d) of the Trademark Act for likelihood of confusion is now made FINAL because the marks are confusingly similar and the goods and/or services are related.

 

 

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. 

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

         

/Faith Beaudry-Torres/

Faith Beaudry-Torres

Law Office 126

(571) 270-3044

faith.beaudry-torres@uspto.gov

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 11, 2020 for

U.S. Trademark Application Serial No. 88413746

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

         

/Faith Beaudry-Torres/

Faith Beaudry-Torres

Law Office 126

(571) 270-3044

faith.beaudry-torres@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”