To: | Ghost L.L.C. (trademarks@brandandbranch.com) |
Subject: | U.S. Trademark Application Serial No. 88506432 - GHOST - N/A |
Sent: | September 30, 2019 05:57:32 AM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88506432
Mark: GHOST
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Correspondence Address: SHABNAM MALEK AND AMANDA R. CONLEY 1305 FRANKLIN STREET, SUITE 220
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Applicant: Ghost L.L.C.
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Reference/Docket No. N/A
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 30, 2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register the mark GHOST and design for clothing, namely, sweatshirts, sweatpants, t-shirts, hats.
The registered marks are:
GHOST in stylized form for, in relevant part, clothing, namely, ladies' coats, jackets, blazers, cardigans, tops, blouses, shirts, dresses, skirts, trousers, shawls, swim wear, jump suits, shorts, swim suits, swim caps, nightgowns, pajamas, robes and underwear; headgear, namely, hats; footwear; leather belts; and
GHOST in stylized form for, in relevant part, clothing, namely, men's, women's and children's tops, t-shirts, sweatshirts, shirts, bottoms, shorts, pants, jeans, jackets, coats, sweaters, capes, underwear, rainwear, swimwear, sleepwear, belts, socks, robes, Halloween and masquerade costumes and masks sold in connection therewith; footwear; headgear, namely, hats and caps.
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.
Similarity of the Marks
In the present case, applicant’s proposed mark GHOST and design is similar to the registered marks GHOST in stylized form. 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 instance, the respective marks create the same general overall commercial impression because the marks share the same sound, appearance, and connotation created by the shared phonetically identical term GHOST. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
The respective design elements, where applicable, do not prevent the refusal. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Furthermore, the likelihood of confusion is increased in this case because the goods are identical and/or are closely related. Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); TMEP §1207.01(b).
Thus, upon encountering applicant’s proposed mark GHOST and design for clothing, namely, sweatshirts, sweatpants, t-shirts, hats and registrants’ marks GHOST in stylized form for, in relevant part, clothing, namely, ladies' coats, jackets, blazers, cardigans, tops, blouses, shirts, dresses, skirts, trousers, shawls, swim wear, jump suits, shorts, swim suits, swim caps, nightgowns, pajamas, robes and underwear; headgear, namely, hats; footwear; leather belts; and GHOST in stylized form for, in relevant part, clothing, namely, men's, women's and children's tops, t-shirts, sweatshirts, shirts, bottoms, shorts, pants, jeans, jackets, coats, sweaters, capes, underwear, rainwear, swimwear, sleepwear, belts, socks, robes, Halloween and masquerade costumes and masks sold in connection therewith; footwear; headgear, namely, hats and caps, consumers are likely to be confused and mistakenly believe that the respective identical and/or closely related goods emanate from a common source.
Relatedness of the Goods and/or Services
The applicant’s clothing, namely, sweatshirts, sweatpants, t-shirts, hats is/are closely related to the registrants’ clothing, namely, ladies' coats, jackets, blazers, cardigans, tops, blouses, shirts, dresses, skirts, trousers, shawls, swim wear, jump suits, shorts, swim suits, swim caps, nightgowns, pajamas, robes and underwear; headgear, namely, hats; footwear; leather belts; and clothing, namely, men's, women's and children's tops, t-shirts, sweatshirts, shirts, bottoms, shorts, pants, jeans, jackets, coats, sweaters, capes, underwear, rainwear, swimwear, sleepwear, belts, socks, robes, Halloween and masquerade costumes and masks sold in connection therewith; footwear; headgear, namely, hats and caps because the respective goods are marketed to the same type of customers in the same channels of trade. The identifications alone are proof of this fact because the respective identifications contain identical goods and/or closely related clothing goods.
Therefore, because the marks share the phonetically identical term GHOST and the goods are identical and/or are closely related, there is a likelihood of confusion as to the source of applicant’s goods. Consequently, the applicant’s mark is not entitled to registration.
PRIOR PENDING APPLICATION(S)
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 marks in the referenced applications. 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.
INFORMATION ABOUT GOODS/SERVICES REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
The applicant must directly answer the following question(s) and/or provide the information requested:
1. If available, the applicant will provide a website address at which the goods and/or services are offered and/or the mark is used. If no website is available, then the applicant will state this fact for the record.
2. Other than any identical goods, does the applicant manufacture or offer any of the goods and/or services that appear in the registrants’ identification(s) of goods and/or services?
3. Other than any identical goods, is the applicant aware of any other company and/or person(s) that provides both the goods and/or services, in whole or in part, listed in both the applicant’s identification and the registrants’ identification(s)? If so, the applicant must provide the name of the company and/or person(s) and any available website address for the same. The applicant need not provide more than five references per each cited registration.
QUESTIONS ABOUT THIS ACTION
If the applicant has technical questions about the TEAS response to Office action form, the applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail. Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving. You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours.
For status inquiries or copies of documents, an applicant may check the status of or view documents filed in the trademark and/or service mark application or registration twenty-four (24) hours a day, seven (7) days a week, using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/. To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.” Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.
For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC). TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199. For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays. A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.
If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.
How to respond. Click to file a response to this nonfinal Office action
/Brian Pino/
Examining Attorney
Law Office 114
571.272.9209 Telephone
Brian.Pino2@uspto.gov
RESPONSE GUIDANCE