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 18, 2020

 

 

This Office action is in response to applicant’s communication filed on January 23, 2020.

 

The citations of U.S. Registration Nos. 5361583 and 4348900 and the potential citation of Application Serial No. 87825075 are herby withdrawn.

 

Likelihood of Confusion - §2(d) Refusal

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. 5052805.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  A copy of the cited registration is attached hereto.

 

Applicant applied to register the mark TOAST in stylized form for “Clothing, namely, coats, jackets, dresses, gowns, jeans, jumpsuits, sweaters, cardigans, loungewear, nightwear, pajamas, bathrobes, shirts, skirts, swimwear, bathing suits, bikinis, tops as clothing, t-shirts, trousers, pants, jerseys, suits, socks, tights, hosiery, scarves, gloves, mittens, underwear, belts; footwear; footwear, namely, boots, sandals, shoes, slippers, trainers, sneakers, plimsolls; headwear; headwear, namely, hats.”  The registered mark is TOAST INDUSTRIES in standard character form for “Athletic tops and bottoms for cycling; Bicycle gloves; Bicycling gloves; Camouflage gloves; Clothing, namely, arm warmers; Clothing, namely, base layers; Clothing, namely, knee warmers; Cross-country gloves; Fingerless gloves; Gloves; Gloves as clothing; Gloves for apparel; Gloves including those made of skin, hide or fur; Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; Headwear for adults; Jackets; Jerseys; Knitted gloves; Motorcycle gloves; Outdoor gloves; Pants for adults; Riding gloves; Ski gloves; Snowboard gloves; T-shirts for adults; Tops.”

 

Similarity of the Marks

The literal whole of the applied-for mark is the word “TOAST.”  The registered mark comprises this exact word with the addition of only the trademark insignificant word “INDUSTRIES” to differentiate it. 

 

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).  Because the word “INDUSTRIES” is disclaimed, the word “TOAST” is the dominant portion of the registered mark.

 

In addition, 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)).  Thus, the literal element “TOAST” is the dominant portion of the applied-for mark.

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Applicant argued that many preceding case law decisions “reiterate [the] requirement to compare marks in their entireties in order to assess whether they create a distinct commercial impression.” 
Response, p. 5.  However, in the cases cited therein, the marks each had a common element which was descriptive or highly suggestive of the goods or services with which they were used.[1]  Here, the word “TOAST” is arbitrary when used in connection with clothing.

 

Applicant further argued that multiple third parties registrations comprising the term “TOAST” “demonstrates that consumers are accustomed to differentiating between these marks.”  Response, p. 6.  However, for products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care.  In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)).  Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods.  In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)).

 

Relatedness of the Goods

The goods at issue include identical shirts, tops, gloves, etc., as well as other closely related clothing items.  Applicant made no arguments against the relatedness of the goods at issue.

 

For the foregoing reasons, the registration refusal is maintained and made FINAL as to the TOAST INDUSTRIES registration.

 

 

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).

 

 

 

                                                                       

/Laura Gorman Kovalsky/

Trademark Attorney, Law Office 110

571.272.9182  phone

laura.kovalsky@uspto.gov

(Telephone and e-mail inquiries are welcome; however, responses are not accepted via e-mail)

 

 

 

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.