| To: | The Wanderers Travel Co. Pty Ltd (mkeipdocket@michaelbest.com) |
| Subject: | U.S. Trademark Application Serial No. 88490076 - WANDERERS - 214797-9001 |
| Sent: | September 17, 2019 12:43:03 PM |
| Sent As: | ecom104@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88490076
Mark: WANDERERS
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Correspondence Address: 100 EAST WISCONSIN AVENUE, SUITE 3300
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Applicant: The Wanderers Travel Co. Pty Ltd
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Reference/Docket No. 214797-9001
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 17, 2019
This Office action is supplemental to the Office action issued previously on September 17, 2019. It is noted that the referenced evidence regarding relatedness of the goods was not attached to the prior Office action. The examining attorney apologizes for any inconvenience to the applicant caused by this omission. The referenced evidence is now included in this Office action.
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied for the standard character mark WANDERERS for goods identified as “Sunglasses” and “Luggage and carrying bags; bags made of leather; handbags including leather handbags made of leather; leather bags; briefcases including leather briefcases; leather cases; purses including leather purses; luggage including leather luggage and leather travelling suitcases; wallets including leather wallets; articles of luggage being bags; bags for toiletry kits; bags for transport of clothes; duffel bags; luggage bags; toiletry bags; travel bags; travelling bags; work bags; tote bags; travel bags” and “Clothing, footwear, headgear.”
Registration No. 5736988 is for the standard character mark WANDERER BRACELETS for goods identified as “Wallets” and “Cell phone cases” and “Jewelry; Key chains” and “Blank journals.”
Registration No. 5790249 is for the standard character mark WOLVERHAMPTON WANDERERS FC for relevant goods identified as “…photographic apparatus and equipment, namely, cases for photographic apparatus… holders specially adapted for mobile phones, computers, cameras, eyeglasses, contact lenses; … covers and cases for mobile telephones and laptop, notebook and tablet computers and PDAs; holders adapted for mobile phones; straps for mobile phones; covers and cases adapted for PDAs, MP3 players, and laptops; … anti-dazzle shades, namely, anti-dazzle spectacles; glasses and sun glasses and cases, chains, cords and frames therefor; visors for protective helmets and sports helmets; … articles of protective clothing, footwear and headgear, namely, protective padded clothing, helmets and industrial boots for protection against bodily harm and blunt force trauma; protective motorcycle and sports helmets; sports helmets, namely, football helmets…” in Class 9; and “… carrier bags in the nature of paper bags, grocery bags, sandwich bags, gift bags, freezer bags, lunch bags and general purpose bags; … plastic materials for packaging, namely, plastic bags for packaging; …” in Class 16.
Registration No. 4297312 is for the stylized design mark having the literal element THE WANDERERS with the design of a zigzag underline for goods identified as “Belts; Blazers; Cardigans; Coats; Footwear; Gloves; Headwear; Jackets; Jeans; Raincoats; Scarves; Shirts; Shorts; Socks; Sweaters; T-shirts; Trousers.” Applicant is advised that renewal documents were due for this cited registration and if not timely filed this registration will be cancelled and will no longer present a bar to the registration of the applied-for mark.
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 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. 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); 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. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case the applied-for mark WANDERERS in standard characters is similar in sound, appearance and meaning to each of the cited registered marks because the marks each contain the wording WANDERERS.
With respect to Registration No. 4297312, the applied-for mark is the plural form of the registered mark and merely deletes the wording THE. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
With respect to Registration No. 5736988, WANDERER BRACELETS, the applied-for mark merely deletes the descriptive and disclaimed wording BRACELETS from the registered mark and contains the plural form of the shared wording WANDERER. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, 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.
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). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Similarly, with respect to Registration No. 5790249, the applied-for mark merely deletes the disclaimed wording WOVERHAMPTON and FC from the registered mark. Indeed, the applied-for mark is entirely incorporated into the mark in Registration No. 5790249. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Thus the applied for mark is similar to each of the registered marks.
COMPARISON OF GOODS
In this case, the application uses broad wording to describe the goods, which presumably encompasses all goods of the type described, including registrants’ more narrow goods as discussed below. 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 registrants’ 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)).
With respect to Registration No. 4297312, the applied-for mark contains the wording “Clothing, footwear, headgear” which is broad enough to encompass all of the wording in the registered identification of goods of “Belts; Blazers; Cardigans; Coats; Footwear; Gloves; Headwear; Jackets; Jeans; Raincoats; Scarves; Shirts; Shorts; Socks; Sweaters; T-shirts; Trousers.”
With respect to Registration No. 5736988, the applied-for mark contains the wording “wallets including leather wallets” which is broad enough to encompass the goods in the cited registration of “wallets.”
With respect to Registration No. 5790249, the applied-for mark contains the wording “sunglasses” which is essentially identical to the wording “glasses and sun glasses” in the registration and the applicant’s “carrying bags” are broad enough to include the registrant’s “photographic apparatus and equipment, namely, cases for photographic apparatus… holders specially adapted for mobile phones, computers, cameras, eyeglasses, contact lenses; … covers and cases for mobile telephones and laptop, notebook and tablet computers and PDAs; holders adapted for mobile phones; straps for mobile phones; covers and cases adapted for PDAs, MP3 players, and laptops” and “… carrier bags in the nature of paper bags, grocery bags, sandwich bags, gift bags, freezer bags, lunch bags and general purpose bags; … plastic materials for packaging, namely, plastic bags for packaging; …” in Class 16. The applicant’s goods of “Clothing” and “headgear” are broad enough to encompass the registrant’s goods of “visors for protective helmets and sports helmets; … articles of protective clothing, footwear and headgear, namely, protective padded clothing, helmets and industrial boots for protection against bodily harm and blunt force trauma; protective motorcycle and sports helmets; sports helmets, namely, football helmets…” in Class 9.
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 and/or services are related.
The attached Internet evidence, consisting of screenshots from Fossil, Kate Spade, Bellroy and Hobo, establishes that the same entity commonly manufactures, produces and provides the relevant goods and markets the goods under the same mark, 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 and 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).
Thus as the applicant’s mark is similar to the registrants’ marks, and as the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods. The applied for mark is thus not entitled to registration under Section 2(d).
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Specifically, the wording “Luggage and carrying bags” is indefinite and overly broad because the nature of the carrying bags has not been specified and the wording is broad enough to encompass all purpose carrying bags in Class 18 or carrying bags specifically adapted for carrying other items, e.g., mobile telephones which would be classified in Class 9 with the goods for which they are specifically adapted or encompass plastic bags or grocery bags in Class 16. The applicant must further clarify and properly classify these goods.
Additionally, Class 18 contains the wording “including” which is indefinite. Applicant may delete the wording “including” and specify the items as two separate clauses, e.g., “handbags; leather handbags made of leather.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a).
The wording “bags for toiletry kits” and “toiletry bags” is overly broad because if these goods are sold filled with specific items, they would be classified with the specific items that they contain, e.g., if filled with non-medicated toiletry preparations they would be classified in Class 3, not Class 18. Thus the applicant must specify whether these goods are sold empty in Class 18 or sold filled with goods from a different class, e.g., Class 3.
Additionally,t he wording “work bags” must be clarified because the nature of the goods is unclear – the applicant must specify the variety of bags claimed and classify as appropriate, e.g., backpacks in Class 18.
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25). Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
Applicant may substitute the following wording, if accurate:
Class 3: bags for toiletry kits, sold filled with non-medicated toiletry preparations, namely, shampoo, cosmetics}; toiletry bags sold filled with non-medicated toiletry preparations, namely, shampoo, cosmetics};
Class 9: sunglasses; carrying bags, namely, {applicant must further specify the nature of these bags, e.g., bags specially adapted for carrying mobile telephones}
Class 16: carrying bags, namely, {applicant must further specify the nature of these bags, e.g., grocery bags}
Class 18: Luggage; carrying bags namely, {applicant must further specify the nature of these bags, e.g.,
All-purpose carrying bags, bags for carrying pets}; bags made of leather; handbags; leather handbags made of leather; leather bags; briefcases;
leather briefcases; leather cases; purses; leather purses; luggage; leather luggage and leather travelling
suitcases; wallets; leather wallets; articles of luggage being bags; bags for toiletry kits sold empty; bags for transport of clothes,
namely, {applicant must further specify the nature of the goods, e.g., travelling bags}; duffel bags; luggage bags; toiletry bags sold empty; travel bags; travelling bags;
work bags, namely, {applicant must specify the specific nature of the work bags, e.g., backpacks}; tote bags
Class 25: Clothing, namely, {applicant must specify the specific items of clothing claimed and classify as appropriate, e.g., hats, shirts, pants}; footwear; headgear, namely, {applicant must specify the specific nature of the headgear claimed and classify as appropriate, e.g., headwear, hats}
Note that bolding, italics, and the like are used only to highlight suggested changes to the original language.
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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 3 classes. 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.
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
/Natalie L. Kenealy/
Examining Attorney
Law Office 104
571-272-7817
Natalie.Kenealy@uspto.gov
RESPONSE GUIDANCE
