United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88423355
Mark: PRECISION TEXTILES
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Correspondence Address: |
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Applicant: Precision Textiles LLC
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Reference/Docket No. 145512016700
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 31, 2019
SECTION 2(d) REFUSAL – 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 is seeking registration for the following goods: "fabrics for textile use; non-woven textile fabrics; woven fabrics; knitted fabrics; coated fabrics for use in manufacturing in a wide variety of industries; laminated textiles; fabrics for the manufacture of mattresses, mattress toppers, mattress covers, mattress protectors, mattress encasements, bedding, pillows, and upholstered furniture and home furnishings; fireproof upholstery and bedding fabrics; fabrics for the manufacture of footwear; fabrics for the manufacture of luggage; fabrics for the manufacture of food packaging; fabrics for the manufacture of automotive interior covers," in International Class 24 in connection with the mark "PRECISION TEXTILES" & design. The cited registration identifies the following goods: "fabric used in the manufacture of apparel, protective garments, medical garments, military and sport parachutes and ponchos, garment labels, fiters, car covers, hamper bags, shoe covers, drapes, window treatments, instrument wraps, mold release agents, fiber re-inforced veils, impression fabrics for use in typewriters, computer printers and other impact printing devices," in International Class 24 in connection with the mark "PRECISION FABRICS GROUP, INC.".
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Applicant is seeking registration for the mark "PRECISION TEXTILES", displayed in a slightly stylized manner and including a design element. The cited registration is for the mark "PRECISION FABRICS GROUP, INC.", displayed as a typed drawing. The visual, phonetic and overall commercial impressions derived from the respective marks are substantially similar. The trademark examining attorney submits it is well-established through case law consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
In the present case, the first words present in the respective marks, i.e., "PRECISION" are obviously identical.
With respect to the remaining wording in the respective marks, the trademark examining attorney submits that 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). Similarly, non-disclaimed 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 trademark examining attorney submits the registrant has disclaimed the wording "FABRICS GROUP, INC.", thereby acknowledging that such wording is less significant in terms of making likelihood of confusion determinations. Similarly, the trademark examining attorney submits that the wording "TEXTILES" in the applied-for mark is merely descriptive of or generic for applicant’s goods and/or services because applicant's identification of goods directly indicates that applicant provides textile goods and/or goods used for textile use. Thus, this wording is also less significant in terms of affecting the mark’s commercial impression, and renders the wording "PRECISION" the more dominant element of the respective marks. Clearly, the dominant and source-identifying elements of the respective marks are identical.
Finally, with respect to the stylization/design elements of applicant's mark, the trademark examining attorney submits that 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)).
Accordingly, the slight stylization/design elements present in applicant's mark does not obviate the substantial similarities present in the literal and source-identifying elements of the marks overall. Further, since a standard character or typed drawing claim allows an applicant or registrant to display a mark in any font or stylization, registrant could display its mark in a manner identical to that of applicant.
Based on the foregoing, the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.
Goods are Related
Applicant is seeking registration for the following goods: "fabrics for textile use; non-woven textile fabrics; woven fabrics; knitted fabrics; coated fabrics for use in manufacturing in a wide variety of industries; laminated textiles; fabrics for the manufacture of mattresses, mattress toppers, mattress covers, mattress protectors, mattress encasements, bedding, pillows, and upholstered furniture and home furnishings; fireproof upholstery and bedding fabrics; fabrics for the manufacture of footwear; fabrics for the manufacture of luggage; fabrics for the manufacture of food packaging; fabrics for the manufacture of automotive interior covers," in International Class 24. The cited registration identifies the following goods: "fabric used in the manufacture of apparel, protective garments, medical garments, military and sport parachutes and ponchos, garment labels, fiters, car covers, hamper bags, shoe covers, drapes, window treatments, instrument wraps, mold release agents, fiber re-inforced veils, impression fabrics for use in typewriters, computer printers and other impact printing devices," in International Class 24.
In this case, the application use(s) broad wording to describe at least portions of its goods, e.g., "coated fabrics for use in manufacturing in a wide variety of industries" and the like, which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow list of goods, e.g., "fabric used in the manufacture of apparel, protective garments, medical garments, military and sport parachutes and ponchos, garment labels, fiters, car covers, hamper bags, shoe covers, drapes, window treatments, instrument wraps, mold release agents, fiber re-inforced veils, impression fabrics for use in typewriters, computer printers and other impact printing devices." See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, at least portions of applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
To provide further support for the above-referenced contentions, the trademark examining attorney submits that it is well-established that companies that provide fabrics for use in manufacturing, provide a variety of types of fabrics for a variety of different uses. Please evidence representative examples of such companies and U.S. registrations regarding same (please also see attached evidence):
Therefore, applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.
Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused under Section 2(d) of the Trademark Act.
PRIOR-FILED APPLICATION(S) - Advisory
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflicts 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.
Ownership of Prior-filed Applications
Applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial No(s). 87490869 and 87491057.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No(s). 87490869 and 87491057,” inserting the relevant application serial number(s); and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Please see TMEP §1201.07 for more information regarding related companies and likelihood of confusion.
DISCLAIMER – Required
In this case, applicant must disclaim the wording "TEXTILES" in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. 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).
The wording "TEXTILES" appears in applicant's identification of goods. Thus, the wording merely describes applicant’s goods and/or services because applicant provides a variety of fabrics for textile use.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use "TEXTILES" 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 – Indefinite
Applicant may substitute the following wording, if accurate:
"Fabrics for textile use; non-woven textile fabrics; woven fabrics; knitted fabrics; thermoplastic coated fabrics for use in manufacturing in a wide variety of industries; laminated textiles to be affixed to the surface of furniture; fabrics for the manufacture of mattresses, mattress toppers, mattress covers, mattress protectors, mattress encasements, bedding, pillows, and upholstered furniture and home furnishings; fireproof upholstery fabrics and bedding cotton fabrics; fabrics for the manufacture of footwear; fabrics for the manufacture of luggage; fabrics for the manufacture of food packaging; fabrics for the manufacture of automotive interior covers," in International Class 24.
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.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action
/Erin Z. Dyer/
Erin Zaskoda Dyer
Examining Attorney
Law Office 103
(571) 272-9740
erin.zaskoda@uspto.gov (preferred)
RESPONSE GUIDANCE