To: | Clockwise, Inc. (morris@elliott-davis.com) |
Subject: | U.S. Trademark Application Serial No. 88514317 - CLOCKWISE - N/A |
Sent: | October 04, 2019 11:51:21 PM |
Sent As: | ecom119@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88514317
Mark: CLOCKWISE
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Correspondence Address:
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Applicant: Clockwise, Inc.
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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: October 04, 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.
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. 5053907. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant seeks registration of the mark “CLOCKWISE” in stylized script for “t-shirts; graphic t-shirts; short-sleeved or long-sleeved t-shirts; t-shirt embroidering services; custom imprinting of t-shirts with decorative designs; custom imprinting of t-shirts with messages; imprinting messages on t-shirts; imprinting of decorative designs on t-shirts; silk screen.”
The registered mark is “KEEP IT CLOCKWISE” for “a-shirts; adhesive bras; American football bibs; ankle socks; anklets; anti-perspirant socks; athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; athletic footwear; athletic pants; athletic shirts; athletic shoes; athletic shorts; athletic skirts; athletic uniforms; babies' pants; baby bodysuits; baby bottoms; baby layettes for clothing; baby tops; balloon pants; bandanas; baseball caps; baseball caps and hats; baseball uniforms; belts for clothing; belts made from imitation leather; belts made of leather; body shirts; bomber jackets; booties; briefs; camouflage gloves; camouflage jackets; camouflage pants; camouflage shirts; camouflage vests; canvas shoes; cap visors; caps; caps with visors; cargo pants; cat suits; children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; children's and infants' apparel treated with fire and heat retardants, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; children's and infants' cloth bibs; children's cloth eating bibs; clothing for athletic use, namely, padded pants; clothing for athletic use, namely, padded shirts; clothing for athletic use, namely, padded shorts; clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; coats made of cotton; combative sports uniforms; crew necks; crop tops; denim jackets; down jackets; fabric belts; fishermen's jackets; fishing shirts; fitted swimming costumes with bra cups; fleece pullovers; fleece shorts; footies; footwear; footwear for men; footwear for men and women; footwear for track and field athletics; footwear for women; garter belts; gloves as clothing; golf pants, shirts and skirts; golf shorts; graphic T-shirts; gym pants; gym shorts; gym suits; halter tops; hat liners; hats; hats for infants, babies, toddlers and children; head scarves; head sweatbands; head wear; headbands; headbands against sweating; headwear; heavy coats; heavy jackets; Henley shirts; hooded pullovers; hooded sweat shirts; hooded sweatshirts; hunting jackets; hunting shirts; infant and toddler one piece clothing; infant sleepers; infant wearable blankets; infants' trousers; jackets and socks; jeggings; jerseys; jogging outfits; jogging pants; jump suits; knee highs; knee-high stockings; knit shirts; knit skirts; knit tops; knitted caps; knitted gloves; leather belts; leggings; leisure shoes; leisure suits; leotards and tights for women, men and children of nylon, cotton or other textile fibers; long jackets; long sleeve pullovers; long sleeved vests; lounge pants; men's socks; men's suits; mixed martial arts suits; moisture-wicking sports bras; moisture-wicking sports pants; moisture-wicking sports shirts; motorcycle jackets; motorcycle rain suits; muscle tops; night shirts; nipple covers, namely, pasties; one piece garment for infants and toddlers; one-piece garments for children; open-necked shirts; outer jackets; over shirts; padded jackets; panties, shorts and briefs; pedicure sandals; perspiration absorbent underwear clothing; pocket kerchiefs; polo knit tops; ponchos; rugby shoes; rugby shorts; rugby tops; running suits; shirts; shirts and short-sleeved shirts; short-sleeve shirts; short-sleeved or long-sleeved t-shirts; ski masks; skullies; sleeping garments; sleepwear treated with fire and heat retardants; sleeved or sleeveless jackets; slipovers; small hats; snap crotch shirts for infants and toddlers; sneakers; soccer bibs; socks; socks and stockings; sport stockings; sports bra; sports caps and hats; sports jackets; sports jerseys and breeches for sports; sports pants; sports shirts; sports shirts with short sleeves; sports shoes; stocking caps; stockings; strapless bras; Suede jackets; sundresses; sweat jackets; sweat pants; sweat shirts; sweat suits; sweat-absorbent socks; sweat-absorbent stockings; sweat-absorbent underclothing; sweaters; sweatpants; sweatshirts; sweatsocks; sweatsuits; t-shirts; tank tops; tank-tops; tee shirts; tee-shirts; thigh high stockings; ties; tights; tops; track and field shoes; track pants; tracksuits; training shoes; training suits; tube tops; turtle neck shirts; underclothes; undershirts; v-neck sweaters; volleyball jerseys; warm up suits; warm-up suits; water socks; waterproof jackets and pants; wearable blankets in the nature of blankets with sleeves; wearable garments and clothing, namely, shirts; women's athletic tops with built-in bras; women's hats and hoods; woven tops; wristbands; yoga pants; yoga shirts.”
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity 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)); TMEP §1207.01(b).
The marks share the dominant and arbitrary term “CLOCKWISE.” The applicant’s use of stylized script does not obviate the similarities of the marks since the registrant’s mark is in standard character and may appear in any font style.
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Because the marks are highly similar and contain the arbitrary and dominant term “CLOCKWISE,” they evoke similar commercial impressions and potential purchasers are likely to believe that applicant’s and registrant’s goods may emanate from the same party. Purchasers may mistakenly believe that the applicant’s mark is referring to the registered mark. Thus, the marks are confusingly similar.
Comparison of Goods/Services
The compared goods or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Both parties offer “t-shirts, graphic t-shirts, short-sleeved” or “long-sleeved t-shirts.” The applicant’s “embroidering services” and “custom imprinting of t-shirts” is related to the goods of the registrant since the services are offered in connection with the “t-shirts, graphic t-shirts, short-sleeved or long-sleeved t-shirts” offered by the registrant.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and services but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
The marks are highly similar and share the term “CLOCKWISE,” some of the goods are identical and the services of the applicant are related to the registrant’s goods. Therefore, purchasers are likely to be confused as to the source of the applicant’s goods and services. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
The applicant is advised of the second ground for refusal:
SPECIMEN REFUSAL
“embroidering,” “custom imprinting” or “silk screen printing” services.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
The applicant is advised as follows:
NEW DRAWING REQUIRED
Therefore, applicant must submit a new drawing showing a clear depiction of the mark with this extraneous matter deleted. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
MARK DESCRIPTION
The following description is suggested, if accurate: The mark consists of the term “CLOCKWISE” in stylized script with “CLOCK” above “WISE.” The term “WISE” is underlined with a stylized rectangular shape with rounded edges.
U.S. COUNSEL RULE – BAR INFORMATION REQUIRED
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.
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
/Paula Mahoney/
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RESPONSE GUIDANCE