To: | Wilson, Nathaniel R (snrwilson1@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88566312 - ONE WORLD - N/A |
Sent: | September 24, 2019 11:19:11 AM |
Sent As: | ecom127@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88566312
Mark: ONE WORLD
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Correspondence Address:
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Applicant: Wilson, Nathaniel R
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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 24, 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
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 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).
Standard of Analysis:
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. 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.
That is, 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 applicant has applied to register the mark ONE WORLD in standard characters for the following goods:
The cited mark is as follows:
Comparison 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).
Comparison of the Goods:
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). However, the compared goods 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] 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).
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Applicant includes various clothing items, including, “athletic apparel, namely, . . . jackets”, Women’s clothing, namely, . . . skirts”, “Apparel for dancers, namely, . . . shorts”, many types of pants such as “athletic pants” and “cargo pants”, “sleep pants” and “sleep shirts”, “small hats”, “top coats”, and “t-shirts”. Registration No. 3937320 cover “tops; bottoms; jackets; skirts; rompers; shorts; pants; sweaters; sleepwear.”
In this case, the registration uses broad wording to describe jackets; skirts; . . . shorts; pants; . . . sleepwear”, which presumably encompasses all goods services of the type described, including applicant’s more narrow “athletic apparel, namely, . . . jackets”, Women’s clothing, namely, . . . skirts”, “Apparel for dancers, namely, . . . shorts”, many types of pants such as “athletic pants” and “cargo pants”, and “sleep pants” and “sleep shirts” respectively. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the attached Internet evidence establishes that the same entity commonly provides many various types of clothing, such as “tops”, “bottoms”, and “jackets” as well as “t-shirts”, “top coats”, and “small hats”, and markets the goods under the same mark. See attached evidence from Express, Banana Republic, and J. Crew. Thus, applicant’s and registrant’s goods 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).
Further, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Conclusion:
The similarity between the applicant's mark and the registered mark, and the relatedness of the applicant's goods to the registrant’s goods, is so great as to create a likelihood of confusion. Thus, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3937320. Trademark Act Section 2(d), 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. Applicant should also note the following requirements.
AMENDED IDENTIFICATION OF GOODS REQUIRED
Applicant may substitute the following wording, if accurate (changes in bold):
Class 010: Compression sleeves for athletic use
Class 025: Baseball caps; Baseball shoes; Basketball shoes; Basketball sneakers; Braces
as suspenders; Coats; Coats for men and women; Coats for babies, adults, children, women, men; Coats made of cotton; Coats of denim; Football boots; Football boots and studs therefor; Football shoes;
Football uniforms; Golf caps; Golf cleats; Golf shoes; Golf shorts; Golf spikes; Golf trousers; Hat frames; Hat liners; Hats; Hats for infants, babies, toddlers and children; Headbands; Headbands
against sweating; Headbands for clothing; Leg shapers; Leg warmers; Leg-warmers; Leggings; Leggins; Pants; Pants for babies, children, men, woman; Shirt fronts; Shirt inserts, namely, dickies; Shirt
yokes; Shirt-jacs; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for suits; Shirts for babies, adults, children, women, men; Sock suspenders;
Socks; Socks and stockings; Sport stockings; Sports bra; Sports bras; Sports jackets; Sports jerseys; Sports jerseys and breeches for sports; Sports over uniforms; Sports overuniforms; Sports shoes;
Sports singlets; Sports vests; Sun leggings; Sun sleeves; Sun visors being headwear; Sweatbands; Wristbands as clothing; Wristbands containing a cooling substance to cool the wearer; A-shirts;
Adaptive clothing, namely, shirts, pants, hats, hooded sweats shirts; Adult novelty gag clothing
item, namely, socks; American football bibs; Ankle socks; Anklets; Anti-perspirant socks; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic pants;
Athletic shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Babies' pants; Balloon pants; Baseball caps and hats; Boat socks; Body shirts; Boots for
sport; Bucket hats; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Button down shirts; Button-front aloha shirts; Camouflage pants;
Camouflage shirts; Camp shirts; Capri pants; Cargo pants; Chef coats; Chef hats; Chef pants; Chef shirts; Cleats for attachment to sports shoes; Cloche hats; Clothing for athletic use, namely, padded
pants; Clothing for athletic use, namely, padded shirts; Clothing for babies, toddlers and children, treated with fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Clothing
shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing, namely, shirts, pants, hats, jackets, hooded sweats shirts containing slimming substances; Collared shirts; Combative sports uniforms; Corduroy pants; Corduroy shirts; Cowboy hats; Crop pants; Dance pants; Denim
pants; Denims; Dress pants; Dress shirts; Duffle coats; Dust coats; Dusters in the nature of coats; Embroidered clothing, namely, shirts, pants, hats, hooded sweats shirts; European football bibs; Evening coats; Fascinator hats; Fashion hats; Fishing shirts; Flood pants; Footwear not for sports;
Fur coats; Fur coats and jackets; Fur hats; Gift packages sold as a unit consisting primarily of a sweatshirt and also including a photo frame, a coffee mug, and a tote bag; Golf shirts; Golf pants,
shirts and skirts; Graphic T-shirts; Gym pants; Head sweatbands; Heavy coats; Henley shirts; Hooded sweat shirts; Horse-riding pants; Hunting pants; Hunting shirts; Jackets and socks; Jackets
incorporating backpacks; Japanese style socks (tabi covers); Japanese style socks (tabi); Jeggings, namely, pants that are partially jeans and partially leggings; Jogging pants; Knit shirts;
Knitwear, namely, shirts, pants, hats, hooded sweats shirts; Lab coats; Leather coats; Leather hats; Leather pants;
Leather shirts; Leg shielding device, attachable to and detachable from a person's pants, comprised of padding to shield the legs from flying debris when mowing with a string trimmer;
Light-reflecting coats; Long-sleeved shirts; Lounge pants; Maternity leggings, namely, leggings featuring built-in maternity bands; Maternity clothing, namely, shirts, pants, hats, hooded
sweats shirts; Men's socks; Men's and women's jackets, coats, trousers, vests; Men's dress socks; Moisture-wicking sports bras;
Moisture-wicking sports pants; Moisture-wicking sports shirts; Morning coats; Night shirts; Non-disposable cloth training pants; Non-slip socks; Nurse pants; Open-necked shirts; Outerwear, namely,
coats, hats, gloves; Over coats; Over shirts; Padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey, and uniforms, body support; Paper hats for use as clothing items; Paper shoes used when going through metal detectors to keep
feet and socks clean; Pea coats; Perspiration absorbent strap to be used in the bill of a hat; Petti-pants; Pinnies in the nature of scrimmage vests for use in sports; Pique shirts; Plastic socks
used in the airport environment when going through security to keep feet clean, dry and sanitary; Plastic slippers used in the airport environment when going through security to keep feet and socks
clean, dry and sanitary; Polo shirts; Postpartum clothing, namely, shirts, pants, hats, hooded sweats shirts; Rain
coats; Rain hats; Ramie shirts; Riding coats; Rugby shirts; Scrub tops and pants not for surgical purposes; Sedge hats (suge-gasa); Sheepskin coats; Short-sleeve shirts; Short-sleeved shirts;
Short-sleeved or long-sleeved t-shirts; Ski pants; Sleep pants; Sleep shirts; Sleeves worn separate and apart from blouses, shirts and other tops; Slipper socks; Small hats; Snap crotch shirts for
infants and toddlers; Snow pants; Snowboard pants; Spats; Sport coats; Sport shirts; Sports pants; Sports shirts; Sports shirts with short sleeves; Sports caps and hats; Stocking hats; Stretch pants;
Studs for football boots; Suit coats; Sun protective clothing, namely, shirts, pants, hats, hooded sweats shirts;
Suspenders; Sweat pants; Sweat shirts; Sweat-absorbent socks; T-shirts; T-shirts for babies, adults, children, women, men; Tap pants; Tee shirts; Tee-shirts; Thermal socks; Toboggan hats; Toboggan
hats, pants and caps; Toe socks; Top coats; Top hats; Track pants; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Trench coats;
Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Trouser socks; Turtle neck shirts; Water socks; Waterproof jackets and pants;
Wearable garments and clothing, namely, shirts; Wind coats; Wind pants; Wind shirts; Winter coats; Women's hats and hoods; Women's clothing, namely, shirts, dresses, skirts, blouses; Woollen socks;
Woolly hats; Woven shirts; Woven shirts for babies, adults, children, women, men; Yoga pants; Yoga shirts; Yoga socks
Class 028: Athletic supporters
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
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.
MULTIPLE USE APPLICATION REQUIREMENTS
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONDING TO THIS OFFICE ACTION
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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
/Carolyn R. Detmer/
Carolyn R. Detmer
Examining Attorney
Law Office 127
571-272-2722
carolyn.detmer1@uspto.gov
RESPONSE GUIDANCE