To: | W Concept Korea Co., Ltd. (ckc@slepatents.com) |
Subject: | U.S. Trademark Application Serial No. 88439499 - FRONTROW MEN - KLP.ITU12 |
Sent: | August 09, 2019 10:00:32 AM |
Sent As: | ecom110@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 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88439499
Mark: FRONTROW MEN
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Correspondence Address: SALIWANCHIK, LLOYD AND EISENSCHENK, P.A.
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Applicant: W Concept Korea Co., Ltd.
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Reference/Docket No. KLP.ITU12
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 09, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
LIKELIHOOD OF CONFUSION
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.
Comparison of the Marks
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).
Applicant’s mark is FRONTROW MEN in standard characters.
The mark in Reg. No. 5249213 is THE FRONT ROW in standard characters.
The mark in Reg. No. 5492998 is FRONT ROW in standard characters.
As to the stylized font of applicant’s mark, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Here, registrants’ marks are in standard characters, therefore, they can be displayed in any manner, including the same stylized font as applicant’s mark. Therefore, the applicant’s stylization does not overcome a likelihood of confusion.
For the foregoing reasons, applicant’s mark is considered similar to registrants’ marks for likelihood of confusion purposes.
Comparison of the Goods and Services
Applicant has applied for the following goods and services:
International Class 009: golf goggle; sunglasses; case for sunglasses; swimming goggles; ski goggles; goggles for sports; frames for eyeglasses and sunglasses; children's eyeglasses; contact lenses; containers for contact lenses; eyeglasses
International Class 18: leather and imitations of leather; bags; bags for carrying pets; bags for sports; handbags; banknote holders; Backpacks; trunks and traveling bags; business card cases; briefcases; purses; umbrellas
International Class 25: shoes; sportswear; men's suits; skirts; outer clothing; pants; shirts; underwear; socks; scarfs neckties headwear; belts for clothing
International Class 35: On-line retail store services featuring leather bags, suitcases and wallets, purses, backpacks, umbrellas, bags for carrying pets, leather credit card cases, luggage, shoes, sandals, pants, jeans, jumpers, coats, skirts, jackets, shirts, t-shirts, sweaters, dresses, swimming suits, underwear, headwear, mufflers as neck scarves, belts for clothing, socks
The goods in Reg. No. 5249213 are:
International Class 25: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bathing suits; Bathrobes; Bikinis; Boxer briefs; Braces; Bras; Bustiers; Clothing, namely, khakis; Dressing gowns; Evening dresses; Fitted swimming costumes with bra cups; Golf shirts; Hats; Head scarves; Head sweatbands; Headbands; Heavy jackets; Jackets and socks; Jeans; Jumpers; Knit shirts; Leather pants; Leather shoes; Lingerie; Long jackets; Men's and women's jackets, coats, trousers, vests; Men's socks; Men's suits; Muffs; Neckties; Outer jackets; Panties, shorts and briefs; Pants; Parkas; Ponchos; Rainwear; Sandals and beach shoes; Sarongs; Scarfs; Shirts; Sports bras; Stockings; Sundresses; Sweat jackets; Sweaters; Swimwear; T-shirts; Tank tops; Ties; Tights; Tracksuits; Trousers; Underwear.
The goods in Reg. No. 5492998 are:
International Class 14: Jewelry
As to applicant’s Class 25 goods compared to the goods in Reg. No. 5249213, when analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the following goods in the application and Reg. No. 5249213 are identical: “men’s suits, pants, shirts, scarves, ties”. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are all related.
Because the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services. Therefore, applicant’s mark is not entitled to registration.
IDENTIFICATION OF GOODS – International Class 25
International Class 009: golf goggle; sunglasses; case for sunglasses; swimming goggles; ski goggles; goggles for sports; frames for eyeglasses and sunglasses; children's eyeglasses; contact lenses; containers for contact lenses; eyeglasses
International Class 18: leather and imitations of leather; bags; bags for carrying pets; bags for sports; handbags; banknote holders; Backpacks; trunks and traveling bags; business card cases; briefcases; purses; umbrellas
International Class 25: shoes; sportswear; men's suits; skirts; outer clothing, namely, ___[indicate specific goods, e.g. coats]; pants; shirts; underwear; socks; scarfs neckties headwear; belts for clothing
International Class 35: On-line retail store services featuring leather bags, suitcases and wallets, purses, backpacks, umbrellas, bags for carrying pets, leather credit card cases, luggage, shoes, sandals, pants, jeans, jumpers, coats, skirts, jackets, shirts, t-shirts, sweaters, dresses, swimming suits, underwear, headwear, mufflers as neck scarves, belts for clothing, socks
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.
DISCLAIMER
Applicant must disclaim MEN because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
Specifically, the attached dictionary definition shows this wording means “adult male.” The recited goods/services are “clothing, presumably for mem.” Therefore, MEN merely describes a feature of the mark in that it immediately refers to the intended people (MEN).
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “MEN” apart from the mark as shown.
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark. TMEP§1213. An unregistrable component of a mark includes wording and designs that are merely of the goods and/or services, and is wording that others would need to use to describe or show their goods and services in the marketplace. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
If applicant does not provide the required disclaimer, the USPTO can refuse to register the entire mark. TMEP §1213.01(b).
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
FOREIGN REGISTRATION
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
ATTORNEY BAR INFORMATION AND ATTESTATION
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.
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