Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  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” 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 has merely deleted the terms “KEEP IT” from the registered mark.  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.

 

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. 

 

U.S. COUNSEL RULE – BAR INFORMATION REQUIRED

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

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.

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

RESPONSE GUIDELINES

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.  

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

 

 

/Paula Mahoney/

Law Office 119

571-272-9191

paula.mahoneyuspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 04, 2019 for

U.S. Trademark Application Serial No. 88516949

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Paula Mahoney/

Law Office 119

571-272-9191

paula.mahoneyuspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 04, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”