United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88470340
Mark: FITWELL
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Correspondence Address: 1912 East Vernon Avenue, Suite 100
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Applicant: MRC Creations, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 11, 2020.
In a previous Office action(s) dated September 11, 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.
Applicant’s arguments in response to this refusal have been carefully reviewed and considered, however, in light of the evidence of record and applicable law, this refusal is maintained and is made FINAL.
Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Section 2(d) Refusal – Likelihood of Confusion
This refusal is maintained and is made FINAL.
Applicant’s applied-for mark is for the standard character mark “FITWELL”. Applicant’s identified goods are “Bodysuits; Bras; Hosiery; Leggings; Lingerie; Panties; Shapewear; Sleepwear; Sports bras; Undergarments; Yoga pants; Women's athletic tops with built-in bras”.
Registration No. 3059429 is for the standard character mark “FITZWELL”. This registration is for “Shoes and footwear”.
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.
Comparison of the Marks,
Under the first step in analysis under Section 2(d) of the Trademark Act, a comparison must be made between registrant’s standard character mark, “FITZWELL” and applicant’s standard character mark, “FITWELL”.
Applicant’s and registrant’s marks are highly similar because they share the elements “FIT” and “WELL” – the dominant features of both marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to the dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. These shared dominant features make applicant’s and registrant’s marks highly similar in sound, appearance, and resulting commercial impression.
Further, applicant’s mark and registrant’s mark both start with the element “FIT” making it more significant in this determination. Consumers are also 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); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Lastly, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).
In this instance the differences between “FITZWELL” and “FITWELL” are slight, and both marks have a highly similar commercial impression. Both marks, as a whole, convey a source of clothing goods associated with the wording “FIT…WELL”. Thus, the minor difference in sound and appearance as a result of applicant deleting the letter “Z” in the middle of registrant’s mark does not sufficiently obviate the otherwise great similarity between these marks.
Given the highly similar appearance, sound, and commercial impression of these marks, they are substantially similar to cause a likelihood of confusion under Trademark Act Section 2(d).
Comparison of the Goods,
The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
Third parties commonly provide shoes and footwear as well as applicant’s identified clothing goods including undergarments, hosiery, leggings, lingerie, shapewear, sleepwear, bodysuits, yoga pants, and/or athletic tops under the same marks. Several representative examples are noted below and supported by evidence of record. See previously attached evidence of record.
CALVIN KLEIN
NIKE
VICTORIA’S SECRET/PINK
http://www.victoriassecret.com/.
J.CREW
GUESS
Additional evidence attached to the present Office Action demonstrates that applicant’s and registrant’s identified goods are commonly offered under the same marks via the same channels of trade:
ADIDAS
http://shop.nordstrom.com/brands/adidas.
NIKE
http://www.macys.com/shop/b/nike/Gender/Women?id=79471.
UNDER ARMOUR
http://www.dickssportinggoods.com/c/under-armour.
See attached evidence.
Further, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, footwear and/or shoes and “Bodysuits; Bras; Hosiery; Leggings; Lingerie; Panties; Shapewear; Sleepwear; Sports bras; Undergarments; Yoga pants; Women's athletic tops with built-in bras,” 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).
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Rebuttal to Arguments in Applicant’s March 11, 2020 Response
In response to the previous Office Action of record, applicant’s principal argument is that applicant’s and registrant’s goods are not confusingly similar. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. Here, the evidence of record clearly demonstrates that third parties routinely offer the goods offered by both applicant and registrant at issue, under the same marks. Further, evidence of record does demonstrate that the same parties routinely offer high heels and other types of footwear and bras under the same marks.
Applicant also argues that the channels of trade may differ with respect to the relevant goods. As additional evidence attached to the present Office Action demonstrates, these goods are commonly available from the same retailers’ stores and even on the same sections of retailers’ webpages. This evidence demonstrates that such goods travel through the same channels of trade. The fact that such goods are worn on different parts of the body is not particularly probative under a likelihood of confusion analysis.
Next, applicant argues that applicant’s and registrant’s marks “are not the same word” and are “not phonetically the same”. This, however, is not the relevant standard under a likelihood of confusion analysis. As argued in greater detail above, applicant’s and registrant’s marks are highly similar in sound, appearance, and resulting commercial impression as a result of applicant’s mark being nearly identical to registrant’s mark, but for the deletion of a single letter in the middle of registrant’s mark.
Lastly, applicant contends that a finding of likelihood of confusion is inappropriate without evidence demonstrating that registrant offers goods under applicant’s mark, “fitwell”. This is not the relevant standard. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). For the reasons noted above and supported by appropriate evidence, applicant’s and registrant’s marks, goods, and channels of trade are sufficiently similar to be refused for likelihood of confusion under Trademark Act Section 2(d).
Accordingly, with the contemporaneous use of highly similar marks with highly related goods, that are sold or provided through the same trade channels and used by the same classes of consumers, consumers are likely to conclude that such goods and services are related and originate from a common source. As such, registration must be continued to be refused under Trademark Act Section 2(d).
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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).
/Dustin T. Bednarz/
Examining Attorney
USPTO Law Office 121
dustin.bednarz@uspto.gov
571-270-1151
RESPONSE GUIDANCE