United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88553155
Mark: ORICO
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Correspondence Address: |
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Applicant: Li,Rong
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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: November 04, 2019
INTRODUCTION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is ORICO for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bras; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Gloves; Hats; Hosiery; Insoles; Men's and women's jackets, coats, trousers, vests; Men's suits, women's suits; Scarfs; Shoes; Shorts; Sleepwear; Sun protective clothing, namely, shirts, pants; Swimsuits; Tee shirts; Underpants; Underwear; Women's clothing, namely, shirts, dresses, skirts, blouses; Bottoms as clothing; Socks and stockings; Tops as clothing,” and the registrant’s mark is:
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 mark is ORICO and registrant’s mark is ORICO. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and/or Services
Accordingly, the applicant's goods/services are closely related to the registrant’s goods/services as discussed further below.
Specifically, the attached evidence shows that third parties routinely offer the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels. See e.g. http://www.nyandcompany.com/best-sellers/N-102961/, http://www.nyandcompany.com/suits/N-103644/ http://www.nyandcompany.com/accessories/sleep-wear-pjs/N-103415/, http://www.nyandcompany.com/accessories/hats-gloves-scarves/N-102563/, http://www.nyandcompany.com/search/?Ntp=1&Ntt=candle and http://www.nyandcompany.com/accessories/beauty/N-102561/ (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels); http://www.chanel.com/us/?gclid=Cj0KCQiAtf_tBRDtARIsAIbAKe0K4-zSaD_KA589lIkdG4MRG3SCjYRDAvecxCfGWCDDQDQmG-WUcb8aAiIzEALw_wcB, http://www.chanel.com/us/fragrance/, http://www.chanel.com/us/makeup/, and http://www.chanel.com/us/skincare/ (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels); and http://www.express.com/mens-clothing, http://www.express.com/womens-clothing, http://www.express.com/womens-clothing/labels-by-category/beauty-wellness/cat4670010, http://www.express.com/womens-clothing/accessories/fragrance-beauty/cat320016 and http://www.express.com/exp/search?q=candle (offering the same or similar goods/services offered by both applicant and registrant under the same mark and/or the relevant goods/services are sold or provided through the same trade channels). The attached Internet evidence, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark and/or the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and/or services 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).
Consequently, upon encountering applicant’s mark used in connection with applicant’s goods/services, and registrant’s mark used in connection with registrant’s goods/services, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
Because the marks are identical and the goods and/or services are closely related, consumers are likely to be confused as to the source of the goods and/or services. Thus, registration is refused pursuant to Trademark Act Section 2(d).
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
REQUIREMENT
If the applicant responds to the refusals, then the applicant also must respond to the below requirements.
US COUNSEL
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
Response guidelines. 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
/Karen S. Derby/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 123
Karen.Derby@uspto.gov
571.270.7070
RESPONSE GUIDANCE