To: | DNVB Inc (tm@beardandbarks.com) |
Subject: | U.S. Trademark Application Serial No. 88470956 - WE ARE NOTHING NEW - 19.120.301 |
Sent: | September 07, 2019 02:58:56 PM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88470956
Mark: WE ARE NOTHING NEW
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Correspondence Address:
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Applicant: DNVB Inc
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Reference/Docket No. 19.120.301
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: September 07, 2019
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
2. U.S. Attorney Information
3. Mark Description
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5234058. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Applicant seeks to register “WE ARE NOTHING NEW” and design for use on “shoes.”
The registered mark is “NOTHING NEW” for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; athletic pants; athletic shirts; athletic shorts; button down shirts; clothing for athletic use, namely, padded pants; graphic t-shirts; hooded sweat shirts; knit shirts; long-sleeved shirts; polo shirts; rugby shirts; shirts and short-sleeved shirts; short-sleeved or long-sleeved t-shirts; short-sleeved shirts; sport shirts; sweat shirts; t-shirts; tee shirts; wearable garments and clothing, namely, shirts; woven shirts; woven shirts for leisure.”
Applicant’s mark closely resembles the registrant’s mark because it completely incorporates the registrant’s mark, which is distinctive per se. The fact that applicant’s mark includes the entirety of another’s mark may lead the ordinary consumer to perceive that the source of the mark “WE ARE NOTHING NEW” is the same as the source for “NOTHING NEW” per se.
Although marks must be compared in their entireties, the word portion generally may be the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010). For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii). Therefore, the addition of the design element in applicant’s mark would not overcome a likelihood of confusion between the marks.
Furthermore, applicant’s and the registrant’s goods are closely related, because they are all articles of clothing.
Applicant’s mark closely resembles the registrant’s mark and the goods identified by these marks are closely related. When used on its identified goods, applicant’s mark may cause confusion or mistake to the ordinary consumers as to the source of such goods in relation to the registrant’s mark. Based on the above discussion, the examining attorney has determined to refuse registration of applicant’s mark.
U.S. COUNSEL INFORMATION
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
The following description is suggested, if accurate:
The mark consists of the wording “WE ARE NOTHING NEW” in stylized font against a rectangular background consisting of three horizontal bars, of which the top and bottom bars are filled. The words “WE ARE” and “NEW” of the mark appear inside the top and bottom bars and “NOTHING” appears in the middle bar.
RESPONSE TO OFFICE ACTION
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
/Dawn Han/
Examining Attorney
Law Office 107
(571) 272-0399
dawn.han@uspto.gov
RESPONSE GUIDANCE