To: | Naapen Goodlin (jjpatentcarl@yahoo.com) |
Subject: | U.S. Trademark Application Serial No. 88498281 - MIA - 7378 |
Sent: | September 25, 2019 02:29:35 PM |
Sent As: | ecom105@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88498281
Mark: MIA
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Correspondence Address: |
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Applicant: Naapen Goodlin
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Reference/Docket No. 7378
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 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues:
REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2259181, 3471359 and 4551753. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. (Please see the attached registrations.)
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.
In this case, the applied-for mark is MIA and design for “Bottoms as clothing; Hoodies; Hoods; Jackets; Jerseys; Outerwear, namely, children, women, men; Shirts for children, women, men,; Shoes for children, women, men,; Shorts for children, women, men,; Sweatpants for children, women, men,; T-shirts for children, women, men,; Tops as clothing; Tops as clothing for children, women, men,; Trunks being clothing; Wearable garments and clothing, namely, shirts; Wrist bands as clothing.” The registered marks are as follows:
U.S. Registration No. 2259181 – MIA for “shoes and footwear”
U.S. Registration No. 3471359 - MIA KIDS for “Footwear”
U.S. Registration No. 4551753 - M.I.A. for “Button down shirts; Collared shirts; Polo shirts; Shirts; Short-sleeved shirts; T-shirts”
Comparison of Marks
The marks convey similar commercial impressions in that they share the wording MIA. The registrant’s depiction of this wording as M.I.A. to the mark in U.S. Registration No. 4551753 does not avoid confusion, as applicant’s mark may also be perceived as an alternate manner of depicting the acronym M.I.A. Moreover, the addition of the disclaimed wording KIDS to the mark in U.S. Registration No. 3471359 does not avoid confusion because, 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).
Lastly, the addition of the design elements to the applied-for mark does not avoid confusion because, 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).
Comparison of Goods and/or Services
With respect to U.S. Registration No. 2259181, this registrant features “shoes” while applicant’s goods include “Shoes for children, women, men.” The goods are thus encompassing in that the registrant’s goods encompass shoes for children women and men, rendering the goods potentially identical.
Similarly, with respect to U.S. Registration No. 3471359, this registrant’s goods include “footwear.” As the attached Internet evidence shows, “footwear” is defined as “Outer coverings for the feet, such as shoes, boots, and sandals.” Thus, the registrant’s goods encompass “Shoes for children, women, men,” rendering the goods potentially identical.
With respect to U.S. Registration No. 4551753, the goods are identical in part, with both parties featuring “shirts.” The goods “T-shirts” in this registration also encompass “T-shirts for children, women, men,” rendering the goods potentially identical. Lastly, applicant’s goods include various types of apparel, including “Tops as clothing.” Such wording encompasses all types of tops as clothing, including all of the goods listed in this registration.
Because the goods are identical in part, similar or encompassing and, therefore, potentially identical, they are likely to be encountered by the same class of potential consumers. Consumers who encounter similar or identical marks for identical, similar or related goods and/or services are likely to be confused as to their source. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant may present arguments in support of registration.
In addition, the applicant must also respond to the following requirement(s):
PRIOR PENDING APPLICATION
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.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 88477083. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
IDENTIFICATION OF GOODS
This requirement is limited to: Outerwear, namely, children, women, men.
The wording “Outerwear, namely, children, women, men” in the identification of goods is indefinite and must be clarified because it does not specify the types of outerwear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if such wording accurately identifies the goods for which applicant seeks registration:
Bottoms as clothing; Hoodies; Hoods; Jackets; Jerseys; Outerwear, namely, [specify, e.g., jackets, raincoats] for children, women, men; Shirts for children, women, men,; Shoes for children, women, men,; Shorts for children, women, men,; Sweatpants for children, women, men,; T-shirts for children, women, men,; Tops as clothing; Tops as clothing for children, women, men,; Trunks being clothing; Wearable garments and clothing, namely, shirts; Wrist bands as clothing
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.
QUESTIONS REGARDING THIS OFFICE ACTION
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Melissa Vallillo/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 105
(571) 272-5891
melissa.vallillo@uspto.gov
RESPONSE GUIDANCE