Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 22, 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:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Application
• Clarification of Identification of Goods and Services
• Application Signature Required
• Entity Type and Citizenship Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3719344 and 2918892.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 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 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

 

Applicant’s mark is BEAST.  The registered marks are BEAST, in standard characters and typed drawings.  These marks are similar.

 

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 the present case, the applied-for mark contains the registered marks in their entireties with identical spelling and pronunciation.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).

 

In the present case, the marks are identical in part, so they convey similar overall commercial impressions.  Thus, the marks are similar for likelihood of confusion purposes.

 

Similarity or Relatedness of the Goods and Services

 

Applicant’s goods and services are “Fibreglass fabrics for textile use; Wall hangings of textile; felt; Bathtowels; quilts; bed covers; pillows covers; Table cloth of textile; Unfitted fabric covers for furniture; bedspread; Linen for household purposes; Travelling rugs (lap robes); Eiderdowns (quilts); bed blankets; Tablecloths, not of paper; Placemats of textile; Towels of textile; sleeping bag; shirts; Dressing gowns; Swim wear for gentlemen and ladies; pyjamas; Baby layettes for clothing; Leotards and tights for women, men and children of nylon, cotton or other textile fibers; Women's underwear; bath sandals; bath slippers; Fashion hats; Hosiery; Gloves as clothing; Scarves; Shawls; Eyeshades as headwear; Demonstration of goods; Advertising services; shop window dressing; On-line advertising and marketing services; television home shopping services; Business management assistance; Providing business information; organization of trade fairs for commercial or advertising purposes; Import-export agency services; Sales promotion for others; Outsourcing services in the nature of arranging procurement of goods for others; Marketing services; commercial administration of the licensing of the goods and services of others; Media relations services; On-line retail gift shops; On-line retail store services containing clothing, cosmetics, quilting supplies, furniture, coffee mugs, body milk, Non-medicated liquid soap, Linen for household purposes, Jewelry and imitation jewelry, Necklaces (jewelley), Artificial flowers, Natural flowers, Beverage glassware, etc.”

 

The goods in Registration No.  3719344 are “Clothing, namely, shirts, tank tops, tee shirts, underclothes, boxer shorts, jockey shorts, underpants, underwear.”  The goods in Registration No. 2918892 are “Athletic footwear.” 

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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 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).

 

the attached Internet evidence from hm.com, gap.com, Adidas.com establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrants’ goods and 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).

 

Conclusion

 

Given that the applied-for mark is confusingly similar to the registrants’ marks in sound and appearance and that applicant’s goods and services are related to registrants’ goods, applicant is rightly refused registration under Section 2(d) for a likelihood of confusion.

 

It is important to note that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).  This is because the overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

 

PRIOR-FILED APPLICATION

 

The filing dates of pending U.S. Application Serial Nos. 87275401 and 88377097 precede applicant’s filing date.  See attached referenced applications.  If one or more of 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 with the registered mark(s).  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 marks in the referenced applications.  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.

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

CLARIFICATION OF IDENTIFICATION OF GOODS AND SERVICES

 

Several entries in the identification of goods and services are indefinite and must be clarified as to the nature or specific type of goods and services provided, as indicated further below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification of goods and services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods and services.

 

The wording “bathtowels” in the identification of goods appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “bath towels.”

 

Applicant may adopt the following identification of goods and services, if accurate:

 

Class 24:  “Fibreglass fabrics for textile use; Wall hangings of textile; felt; Bath towels; quilts; bed covers; pillows covers; Table cloth of textile; Unfitted fabric covers for furniture; bedspread; Linen for household purposes; Travelling rugs being lap robes; Eiderdowns being quilts; bed blankets; Tablecloths, not of paper; Placemats of textile; Towels of textile; sleeping bag.” 

 

Class 25:  No Changes Required.

 

Class 35:  “Demonstration of goods; Advertising services; shop window dressing; On-line advertising and marketing services; providing television home shopping services in the field of {indicate types of goods}; Business management assistance; Providing business information; organization of trade fairs for commercial or advertising purposes; Import-export agency services; Sales promotion for others; Outsourcing services in the nature of arranging procurement of goods for others; Marketing services; commercial administration of the licensing of the goods and services of others; Media relations services; On-line retail gift shops; On-line retail store services featuring clothing, cosmetics, quilting supplies, furniture, coffee mugs, body milk, Non-medicated liquid soap, Linen for household purposes, Jewelry and imitation jewelry, Necklaces being jewellery, Artificial flowers, Natural flowers, Beverage glassware, {indicate any other types of goods featured}.” 

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

APPLICATION SIGNATURE REQUIRED

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

ENTITY TYPE AND CITIZENSHIP REQUIRED

 

The application does not indicate applicant’s legal entity and citizenship, or state or country of organization or incorporation.  Accordingly, applicant must specify its legal entity and its national citizenship or the U.S. state or foreign country of organization or incorporation.  See 37 C.F.R. §§2.32(a)(3)(i)-(iv), 2.61(b); TMEP §§803.03, 803.04.  Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent.  See TMEP §§803.03 et seq. 

 

If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship.  TMEP §803.03(a). 

 

If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the U.S. state or foreign country under whose laws applicant is organized or incorporated.  TMEP §803.04.  For a U.S. partnership or joint venture, applicant must also list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers.  TMEP §803.03(b)-(c).  For an association, applicant must also specify whether the association is incorporated or unincorporated.  TMEP §803.03(c).

 

RESPONSE GUIDELINES

 

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

 

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 refusals and/or requirements 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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Clare Cahill/

Examining Attorney

Law Office 120

(571) 272-5218

clare.cahill@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 July 22, 2019 for

U.S. Trademark Application Serial No. 88419882

 

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. 

 

 

/Clare Cahill/

Examining Attorney

Law Office 120

(571) 272-5218

clare.cahill@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 July 22, 2019, 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.”