Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

FINAL OFFICE ACTION

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

Issue date:  April 02, 2020

 This Office action is in response to applicant's communication filed on March 4, 2020.

In a previous Office action dated September 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods in Classes 24 and 25, clarify domicile information and provide U.S. Attorney registration information.

In response, applicant satisfied the identification of goods requirement, the domicile requirement and the U.S. attorney registration information requirement.

However, with respect to the Section 2(d) refusal, the examining attorney considered the applicant's arguments in response and finds them unpersuasive and remains of the opinion that the applicant's mark is confusingly similar to the registered mark in U.S. Registration No. 3768270. Accordingly, the refusal under Trademark Act Section 2(d) is now made FINAL.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The refusal of registration of the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 3768270 is hereby made Final. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

Applicant’s mark is T2 (in special form) for "Rubber or silicone wristbands in the nature of a bracelet" in International Class 14; “Posters, paper flags” in International Class 16; “Flags of plastic and fabric” in International Class 24; and “Clothing, namely t-shirts” in International Class 25.

Registrant's mark is TSQUARED (Reg. No. 3768270) for "T-shirts; tank tops; tee shirts; sweatshirts; shirts; tops; leggings" in International Class 25.

Comparison of Marks:

Here, the marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

Specifically, applicant’s mark, T², is phonetically equivalent to registrant’s mark, TSQUARED. “2” superscript means “squared”. Please see the attached evidence from Wolfram MathWorld, Vocabulary.Com and Wikipedia. As such, both marks are pronounced “T SQUARED”, both marks have the same meaning and both marks create an identical overall commercial impression.

In response, applicant uses extrinsic evidence to show that the marks have different connotations. However, the marks are considered as they are presented in the application and registration. Extrinsic evidence of actual use is not considered in the analysis. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).

In addition, applicant argues that the marks are distinct because SQUARED is spelled out in the registration. The examining attorney disagrees. The marks are both pronounced the same way and create the same overall commercial impression of T SQUARED.

Given the shared sound and meaning, the marks create a highly similar overall commercial impression which is sufficient for finding a likelihood of confusion.

Relatedness of Goods:

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Here, applicant’s wristbands, posters, paper flags, plastic and fabric flags and t-shirts and registrant’s t-shirts are closely related because the same entity commonly provides applicant’s and registrant’s goods, under the same mark.

The previously and newly attached Internet evidence, consisting of webpage screenshots from Positive Brands, Kelleigh’s Cause, Focus 3, Livestrong, Sidemen, Ames Bros, Squadrom Posters, Grunt Style, 26 Shirts, Gadsen Culpeper, Purposefull, Mingua Beef Jerky, No Stomach For Cancer, Minnesota Vikings Locker Room Official Team Store, Orange Mountain Designs, NNIRR, NKF Nerd Kung Fu, Hello Merch, Jessie’s Story, Greater Goods, Magnetic Pedigrees, The Red and White Shop, Jadore, Go Heels, Kitty Hawks Kites, EMarinePX, Patriot Depot, Coastal Cottage, I Heart Dogs, MLB Shop, Lids and Mount Vernon establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. In addition, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Finally, the goods are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

Further, the trademark examining attorney attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, t-shirts, rubber or silicone wristbands in the nature of a bracelet, posters, paper flags and flags of plastic and fabric, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

The third-party registrations and Internet evidence show that the applicant’s goods and the registrant’s goods are closely related and travel through similar trade channels to the same class of consumers.

In response, applicant does not argue against a finding that the goods are related.

Thus, upon encountering registrant’s mark used for t-shirts; tank tops; tee shirts; sweatshirts; shirts; tops; leggings and applicant’s mark used for t-shirts, rubber or silicone wristbands in the nature of a bracelet, posters, paper flags and flags of plastic and fabric, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.

Given the foregoing, registration is refused under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

RESPONSE GUIDELINES

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

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How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

/Tara L. Bhupathi/

Examining Attorney

Law Office 124

(571) 272-5557

tara.bhupathi@uspto.gov

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on April 02, 2020 for

U.S. Trademark Application Serial No. 88462749

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

(1)  Read the official letter.

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

/Tara L. Bhupathi/

Examining Attorney

Law Office 124

(571) 272-5557

tara.bhupathi@uspto.gov

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 02, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”