To: | Pilmore, Daryl (info@gotrademarks.com.au) |
Subject: | U.S. Trademark Application Serial No. 88442867 - SKITZO - N/A |
Sent: | August 14, 2019 10:01:29 AM |
Sent As: | ecom101@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88442867
Mark: SKITZO
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Correspondence Address: |
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Applicant: Pilmore, Daryl
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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 14, 2019
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
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied for the mark SKITZO for “Beanies; Bottoms as clothing; Caps being headwear; Dresses; Footwear; Gym pants; Gym suits; Headwear; Hoodies; Jackets; Jumpers; Leggings; Pants; Shirts; Shorts; Singlets; Sport shirts; Sports bras; Sports pants; Sweaters; Tank tops; T-shirts,” in Class 25.
Registrant has registered the mark SKITZO KITTY for “Clothing, namely, bathrobes, beach cover-ups, beachwear, belts, blazers, blouses, body shapers, body suits, boxer shorts, bras, bustiers, camisoles, caps, coats, dresses, foundation garments, garter belts, girdles, gloves, gowns, halter tops, hats, headbands, hosiery, jackets, jeans, jogging suits, knee highs, knit shirts, knit tops, leotards, lingerie, loungewear, mittens, negligees, night gowns, night shirts, pajamas, panties, pants, pantyhose, sarongs, scarves, shirts, shorts, skirts, slacks, sleepwear, slips, socks, stockings, suits, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swim wear, t-shirts, tank tops, tap pants, teddies, ties, tights, underpants, undershirts, underwear and vests,” in Class 25 [Registration No. 4307707].
Analysis for Section 2(d)
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.
Similarities 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).
In this case, the marks are similar in that they both contain the identical word SKITZO. 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”). Moreover, applicant’s mark is incorporated within that of registrant’s. 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.
Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
In this case, in view of the identical nature of the predominant portions of the marks in issue, it is the view of the examining attorney that consumer confusion as to source would be likely if used on the same or highly related goods.
Relatedness of the Goods
In this case, the goods are all clothing items that will travel the same trade channels and be encountered by the same classes of purchasers.
See
http://www.jcrew.com/r/search/?N=0&Nloc=en&Ntrm=shirts&Nsrt=&Npge=1&Nrpp=60
http://www.jcrew.com/r/search/?N=0&Nloc=en&Ntrm=belts&Nsrt=&Npge=1&Nrpp=60
http://www.jcrew.com/r/search/?N=0&Nloc=en&Ntrm=shorts&Nsrt=&Npge=1&Nrpp=60
http://www.jcrew.com/r/search/?N=0&Nloc=en&Ntrm=jackets&Nsrt=&Npge=1&Nrpp=60
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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). Therefore, 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, 1026 (Fed. Cir. 1988).
Conclusion
It is the conclusion of the examining attorney that consumer confusion as to source would likely result from the contemporaneous registrations of applicant and registrant’s marks as used on or in connection with the parties’ respective goods and registration is accordingly refused.
Attorney and Domicile Required
To provide applicant’s domicile address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.
Applicant must provide additional information and documentation about his domicile. To permit proper examination of the application, applicant must provide additional information and documentation to clarify that applicant’s physical street address is in the United States and to determine whether applicant is subject to the requirement under 37 C.F.R. §2.11(a) to be represented by a U.S.-licensed attorney. See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; TMEP §814. If applicant’s physical street address is outside the United States, then this requirement may be withdrawn, but applicant must appoint or designate a U.S.-licensed attorney. See 37 C.F.R. §2.11(a).
An applicant’s domicile address is an application requirement and also dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent them at the USPTO. See 37 C.F.R. §§2.11(a), 2.22(a)(1), 2.32(a)(2), 2.189. An applicant whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o)-(p), 2.11(a). Foreign citizens must comply with U.S. visa immigration laws to claim the United States as their permanent legal residence.
Accordingly, applicant must provide all of the following:
(1) An explanation of the basis for claiming that the United States address provided in the “Owner Information” section of the application is applicant’s lawful permanent residence (if an individual) or business headquarters (if a juristic entity). For example, if applicant is an individual who is a foreign citizen, applicant may state that he or she has a valid form I-551 that admits applicant to live in the United States as a permanent resident, and provide the dates of issuance and expiration of the I-551. A juristic entity may state that it is an entity actively registered in a specific U.S. state or territory at the designated address, as established by documentation submitted from the relevant office or agent of that state or territory.
(2) Documentation showing that the address in the application is applicant’s address of residence (for an individual) or business headquarters (for a juristic entity), such as:
(i) a valid signed rental, lease, or mortgage agreement dated within one year of the application filing date;
(ii) a valid homeowner’s, renter’s, or motor vehicle insurance policy dated within one year of the application filing date;
(iii) a computer generated bill issued by a utility company dated within 60 days of the application filing date; or
(iv) change-of-address confirmation from the U.S. Postal Service showing applicant’s prior and current address (Form CNL107).
Submitted documentation must show the name and address of the residence or business and the date of the document but should redact other personal and financial information.
Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants & Registrants, Examination Guide 4-19, at I.A.4 (Aug. 2019); see 37 C.F.R. §§2.11(b), 2.61(b), 2.189.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Applicant also is advised that providing false statements or documentation concerning applicant’s domicile address or in response to this request for information is deemed submitting a paper for an improper purpose in violation of 37 C.F.R. §11.18(b), and subject to the sanctions and actions provided in 37 C.F.R. §11.18(c). See 37 C.F.R. §2.11(e).
To provide the explanatory statement and documentation for a U.S. street address. Open the correct TEAS response form and enter the serial number, answering “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) provide in the text box a statement explaining the basis for applicant’s claim that the U.S. street address is applicant’s physical domicile address; and (2) click the button below the text box to attach evidence showing the U.S. street address is applicant’s domicile.
Applicant must be represented by a U.S.-licensed attorney because it is not clear that applicant’s current address supports domicile in the United States. Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See 37 C.F.R. §§2.2(o), 2.11(a). See Hiring a U.S.-licensed trademark attorney for more information. If applicant can establish domicile in the United States, this requirement may be withdrawn.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Foreign Wording
NOTE: If there is no English translation, applicant must so indicate.
Foreign Registration Required
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
Response
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.
/EFalk/
Erin M. Falk
erin.falk@uspto.gov
U.S. Patent & Trademark Office
Trademark Examining Attorney, LO101
(571)-272-1110
RESPONSE GUIDANCE