To: | Textile-Based Delivery, Inc. (bandia@greensborolaw.com) |
Subject: | U.S. Trademark Application Serial No. 88436930 - NUFABRX - N/A |
Sent: | August 19, 2019 10:50:13 AM |
Sent As: | ecom128@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88436930
Mark: NUFABRX
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Correspondence Address:
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Applicant: Textile-Based Delivery, Inc.
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Reference/Docket No. N/A
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: August 19, 2019
Specimen unacceptable – REFUSAL
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 24. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Here, applicant’s specimen of record does not show the applied-for mark “NUFABRX” in use in commerce for the goods identified in Class 24, namely, “Fabrics for textile use; Fabrics for the manufacture of compression socks, compression leggings, and compression arm sleeves, T-shirts, socks, yoga pants; Textile fabrics for the manufacture of clothing.” Specifically, the applied-for mark does not appear anywhere on the socks, and the applied-for mark appears next to the compression sleeve. However, the applied-for mark is not on the compression sleeve but rather, a different mark, namely, “VENOM SPORTS FITNESS” appears on the compression sleeve and on various locations on third-party website providing the sleeves. Therefore, the applicant’s specimen of record demonstrating socks and compression sleeves does not show “NUFABRX” in use in commerce in Class 24.
At best, the mark appears to be used to identify a component of the goods of third parties. When the specimen clearly indicates that the mark relates only to a distinguishable component or ingredient of a finished product, then the application should identify that component or ingredient as the goods rather than the finished product. See Ex parte The Joseph & Feiss Co., 114 USPQ 463 (Comm’r Pats. 1957); Ex parte Palm Beach Co., 114 USPQ 463 (Comm’r Pats. 1957); Mercantile Stores Co. v. The Joseph & Feiss Co., 112 USPQ 298 (Comm’r Pats. 1957); In re Libbey-Owens-Ford Glass Co., 75 USPQ 202 (Comm’r Pats. 1947); TMEP §1402.05(a). Since applicant’s identification currently identifies the goods as components sold separately from the finished products, the specimen must show the mark in use in connection with fabrics not yet transformed into the finished goods.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Step-by-Step Instructions For Submitting a Substitute Specimen
To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should:
(1) Answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted;
(2) Under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”;
(3) Under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes);
(4) Describe what the specimen consists of; and
(5) Select the following statement: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application”
Note: When submitting a verified substitute specimen, the TEAS online response form requires TWO signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Section 2(d) Likelihood of Confusion – Refusal
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 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. 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 and differences in the marks.”); TMEP §1207.01.
Applicant’s mark is “NUFABRX” (in standard character form) for goods including “Compression garments; Compression garments, namely, compression socks, compression leggings, and compression arm sleeves; Fabric sold as an integral component of compression garments.”
Registrant’s mark is “NBRX” (in stylized form with design) for “Athletic footwear; footwear.”
Comparison of Marks
In a likelihood of confusion comparison, 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, applicant’s mark “NUFABRX” and registrant’s mark “NBRX” are highly similar.
Here, both marks contain the wording “NBRX” and this is the entirety of the cited registered mark. 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.
Lastly, the fact that registrant’s mark is stylized with a design element does not obviate the likelihood of confusion as the dominant portion of the registered mark is “NBRX”. 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)).
Therefore, as registrant’s mark is entirely incorporated in the applicant’s mark, applicant’s “NUFABRX” and registrant’s “NBRX” are confusingly similar.
Relatedness of Goods
The applicant’s compression garments including socks, sleeves, and leggings, for example, are closely related to registrant’s footwear and athletic footwear because all the goods are wearable goods that are often manufactured and marketed under the same trademark.
The attached evidence from Reebok®, Nike®, New Balance®, and Adidas® (http://www.reebok.com/us/compression-socks, http://www.reebok.com/us/men-running-shoes, http://www.nike.com/w/nike-compression-baselayer-bottoms-2uascz7yfb, http://www.nike.com/w/mens-shoes-nik1zy7ok, http://www.newbalance.com/women-accessories-sports-recovery/, http://www.newbalance.com/women/shoes/running/, http://www.adidas.com/us/men-compression, and http://www.adidas.com/us/performance-shoes) demonstrate that athletic footwear and compression socks, leggings, and sleeves are commonly sold together. Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Because the marks are confusingly similar and because the marks refer to closely related, if not the same, wearable goods, consumers would be likely to mistakenly believe that the goods emanate from a single source. Accordingly, registration is refused under Trademark Section 2(d).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Olivia S. Lee/
Olivia S. Lee
Trademark Examining Attorney
Law Office 128
(571) 272-6848
olivia.lee@uspto.gov
RESPONSE GUIDANCE