To: | Thomas Pepe (mnice@disrupt.holdings) |
Subject: | U.S. Trademark Application Serial No. 88443945 - STRETCHSTRAP - N/A |
Sent: | August 20, 2019 04:05:20 PM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88443945
Mark: STRETCHSTRAP
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Correspondence Address: 9119 HIGHWAY 6, SUITE 230 #186
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Applicant: Thomas Pepe
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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 20, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
DEFERRED SEARCH ADVISORY
A review of the merits of the application and a search of the Office’s database of registered and pending marks for potentially conflicting marksare both deferred until applicant responds to the issues raised in this Office action. TMEP §704.02.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark “STRETCHSTRAP” for “sports products or consumer goods” in International Class 28.
The cited registration is:
Registration No. 5527317 “STRETCH OUT STRAP” for “exercise equipment, namely, manually-operated exercise equipment in the nature of a strap for use in stretching” in International Class 28.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of 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).
Applying the above analysis to this case, the marks are substantially similar. Applicant’s mark and registrant’s mark share the same terms “STRETCH” and “STRAP”. Although registrant’s mark has the additional term “OUT”, 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.
In this case, “STRETCH” and “STRETCH OUT” create the same commercial impression. As seen in the evidence attached, “STRETCH OUT” is synonymous to “STRETCH”.
Ultimately, when consumers encounter sporting goods of applicant and registrant using marks with terms that differ by one word, but which are otherwise identical in part in appearance and overall impression, they are likely to believe that the marks identify a single source of goods. Thus, the marks are confusingly similar.
Comparison of Goods
In this case, the application uses broad wording to describe “sports products or consumer goods”, which presumably encompasses all goods of the type described, including registrant’s narrower list of goods, “exercise equipment, namely, manually-operated exercise equipment in the nature of a strap for use in stretching”. 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, 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 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 are related.
Therefore, since the marks are substantially similar and the goods are legally identical, there is a likelihood of confusion and registration must be refused.
Applicant should note the following additional ground for refusal.
SECTION 2(E)(1) REFUSAL – MERELY DESCRIPTIVE – THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Registration is refused because the applied-for mark merely describes a feature and purpose of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The applicant has applied to register “STRETCHSTRAP” for “Sports products”, in International Class 28.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Here, “STRETCHSTRAP” merely describes a feature and purpose of applicant’s goods.
Specifically, “STRETCH” is defined as “straighten or extend one's body or a part of one's body to its full length, typically so as to tighten one's muscles or in order to reach something.” See http://www.lexico.com/en/definition/stretch. “STRAP” is defined as “a strip of leather, cloth, or other flexible material, used to fasten, secure, or carry something or to hold on to something.” See http://www.lexico.com/en/definition/strap.
Furthermore, the entire mark “STRETCHSTRAP” is descriptive of the goods. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise non-descriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the entire mark are descriptive of applicant’s goods and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods.
Moreover, third parties reference “STRETCHSTRAP” to describe goods are straps that consumers improve range of motion, alleviate muscle tightness, improve posture, and help with stretches.
· http://www.meyerpt.com/body-sport-stretch-strap
· http://www.gaiam.com/products/05-60562
· http://www.thera-bandacademy.com/tba-portal/Stretch-Strap
Ultimately, when purchasers encounter applicant’s goods using the mark “STRETCHSTRAP” they will immediately understand that applicant’s goods are straps that consumers improve range of motion, alleviate muscle tightness, improve posture, and help with stretches. Thus, “STRETCHSTRAP” is merely descriptive of a feature and purpose of applicant’s goods, and registration is refused on the Principal Register.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusals, applicant must also respond to the requirement set forth below.
GENERIC ADVISORY
REQUEST FOR INFORMATION – DESCRIPTIVE REFUSAL
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions:
(a) Are applicant’s goods used for straightening or extending one's body or a part of one's body to its full length?
(b) Are the applicant’s goods made of elastic?
(c) Are the applicant’s goods made of woven nylon?
(d)Where can applicant’s goods typically be purchased?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
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.
IDENTIFICATION OF GOODS REQUIREMENT
In addition, “consumer goods” in the identification of goods can cover a range of products that could be included in any international class. Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods. In this case, however, because the nature of the goods is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording. See TMEP §1402.01(e).
Applicant may substitute the following wording, if accurate (suggestions in bold):
International Class 9: Sports products, namely, sport eyewear
International Class 18: Sports products, namely, all-purpose sport bags
International Class 25: Sports products, namely, sports bra, sports shirts, sports shoes, and sports pants
International Class 28: Sports products, namely, bags adapted for holding or carrying sport balls for soccer, balls for sports, and stretch
bands used for yoga and physical fitness purposes; or consumer goods
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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
/Marcya N. Betts/
Marcya N. Betts
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
RESPONSE GUIDANCE