To: | J. C. PENNEY PURCHASING CORPORATION (TRADEMARKS-SM@JCP.COM) |
Subject: | U.S. Trademark Application Serial No. 88483643 - THE FOUNDRY BIG & TALL SUPPLY CO. - N/A |
Sent: | February 28, 2020 06:50:15 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88483643
Mark: THE FOUNDRY BIG & TALL SUPPLY CO.
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Correspondence Address:
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Applicant: J. C. PENNEY PURCHASING CORPORATION
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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: February 28, 2020
This Office action is in response to applicant’s communication filed on February 6, 2020.
The applicant (1) did not provide substantive arguments with respect to the Section 2(d) likelihood of confusion refusal; (2) amended the identification of goods; and (3) provided a disclaimer. Nos. (2) and (3) are acceptable. The amended identification of goods and the disclaimer have been entered into the record.
Section 2(d) Refusal – Likelihood of Confusion
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4925044. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
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.
Applicant has applied to register THE FOUNDRY BIG & TALL SUPPLY CO. (and Design) for “Clothing, namely, knit, woven, jersey and tee shirts, pants, jeans, denims, shorts, swimsuits, sleepwear, robes, jackets, hoodies; outerwear, namely, jackets, vests and coats; active wear, namely, sweat pants, sweat shirts, fleece bottoms, athletic shorts, track pants and track jackets.”
Registrant’s mark is THE FOUNDRY CLOTHING COMPANY (Standard Characters) for “T-Shirts, Hats, Sweatshirts, Pants, Jackets, Apparel Tops and Bottoms.”
Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In this case, the marks contain the same dominant wording, namely, “THE FOUNDRY.” Registrant’s mark consists of the wording “THE FOUNDRY” followed by the generic wording “CLOTHING COMPANY,” which has been disclaimed. The literal portion of applicant’s mark consists of the wording “THE FOUNDRY” followed by the descriptive wording “BIG & TALL SUPPLY CO.,” which has been disclaimed. Because of this common wording, the marks are highly similar in sound, appearance, and overall commercial impression. Attached to the August 9, 2019 Office action is the definition of “foundry” from http://www.ahdictionary.com/word/search.html?q=foundry.
Relatedness of the Goods
In this case, the goods in the application and registration are identical in part. Registrant’s goods include t-shirts, pants, sweatshirts, and jackets; applicant’s goods also include tee shirts, pants, jackets, and sweat shirts. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
The goods are also legally identical in part. The registration uses broad wording to describe “Apparel Tops and Bottoms,” which presumably encompasses all goods of the type described, including applicant’s more narrow “fleece bottoms.” 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 in part. 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)).
To the extent the clothing items are not identical in part or legally identical in part, they are highly related. Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods. Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
Applicant’s Response
Applicant writes in the February 6, 2020 response that it “requires time to consider viable options for addressing the refusal, which options could include, by way of example, potentially filing a cancellation petition or considering a possible co-existence agreement.”
As a general rule, the USPTO will not suspend an application to give an applicant time to secure a consent agreement. TMEP §716.02.
If the examining attorney refuses registration under §2(d) of the Trademark Act in view of the mark in a prior registration, the applicant may file a petition to cancel the registration under 15 U.S.C. §1064 and, within a proper response period, inform the examining attorney that the petition to cancel has been filed. This will constitute a proper response to the §2(d) refusal, and may be done by telephone, if there are no other outstanding issues that require a written response. The examining attorney will then suspend further action until the termination of the cancellation proceeding, if the application is otherwise in condition for approval or final refusal. The applicant should provide the number of the cancellation proceeding, if available; however, if the applicant does not provide the cancellation number, the examining attorney may ascertain it from USPTO records. TMEP §716.02(a).
The examining attorney should suspend further action only if the applicant states that the cancellation proceeding has already been filed or is being filed concurrently with the response to the Office action. Id.
For the foregoing reasons, the Section 2(d) likelihood of confusion refusal is maintained and made FINAL.
Responding to a Final Office Action
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).
If the applicant has any questions about this final Office action, please call the assigned examining attorney.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.Gaynor@uspto.gov
RESPONSE GUIDANCE