| To: | Xu, Ming (mate12usa@gmail.com) |
| Subject: | U.S. Trademark Application Serial No. 88570941 - MATE 12 - N/A |
| Sent: | November 12, 2019 08:34:38 PM |
| Sent As: | ecom105@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 Attachment - 21 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88570941
Mark: MATE 12
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Correspondence Address:
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Applicant: Xu, Ming
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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 12, 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 marks in U.S. Registration Nos. 5585893, 5747926 and 5705872. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied for mark is MATE 12 for “A-shirts; Abayas; Adhesive bras; Adult novelty gag clothing item, namely, socks; After ski boots; Aikido uniforms; Albs; American football bibs; Anglers' shoes; Ankle boots; Ankle socks; Anklets; Anoraks; Anoraks; Anti-perspirant socks; Anti-sweat underclothing; Anti-sweat underwear; Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Apres-ski shoes; Aprons; Aqua shoes; Artificial flower headdresses; Ascots; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic footwear; Athletic jackets; Athletic pants; Athletic shirts; Athletic shoes; Athletic shorts; Athletic skirts; Athletic sweaters; Athletic tights; Athletic uniforms; Babies' pants; Babies' trousers; Babushkas; Baby bibs not of paper; Baby bodysuits; Baby bottoms; Baby doll pyjamas; Baby layettes for clothing; Baby tops; Balaclavas; Ball gowns; Ballet shoes; Ballet slippers; Balloon pants; Ballroom dancing shoes; Ballroom dancing uniforms; Bandanas; Bandeau tops; Bandeaux; Barber smocks; Baseball caps; Baseball caps and hats; Baseball shoes; Baseball uniforms; Baselayer bottoms; Baselayer tops; Basketball shoes; Basketball sneakers; Bath robes; Bath sandals; Bath slippers; Bathing caps; Bathing costumes; Bathing costumes for women; Bathing suits; Bathing suits for men; Bathing trunks; Bathrobes; Beach cover-ups; Beach coverups; Beach footwear; Beach shoes; Beachwear; Beanies; Bed jackets; Belts; Belts for clothing; Belts made from imitation leather; Belts made of leather; Belts made out of cloth; Belts of textile; Belts that are designed to accommodate pregnancy size changes; Berets; Bermuda shorts; Bib overalls; Bib overalls for hunting; Bib shorts; Bib tights; Bibs for babies, sleeved, not of paper; Bibs not of paper; Bibs, not of paper; Bicycle gloves; Bicycling gloves; Biketards; Bikinis; Birding vests; Blazers; Bloomers; Blouses; Blousons; Blue jeans; Board shorts; Boardshorts; Boas; Boat shoes; Boat socks; Boaters; Bodices; Bodies being underclothing; Body linen; Body shapers; Body shirts; Body stockings; Body suits; Bodysuits; Boleros; Bolo ties; Bomber jackets; Bonnets; Boot accessories, namely, fitted decorative covers for boots; Boot cuffs; Boot uppers; Booties; Boots; Boots for motorcycling; Boots for sport; Bottoms as clothing; Bow ties; Bowling shoes; Boxer briefs; Boxer shorts; Boxing shoes; Boxing shorts; Bra extenders; Bra strap cushions; Bra strap pads; Braces as suspenders; Bralettes; Bras; Brassieres; Breeches; Breeches for wear; Bridal garters; Bridesmaid dresses; Briefs; Briefs as underwear; Brogue shoes; Bucket caps; Bucket hats; Burkas; Business wear, namely, suits, jackets, trousers, blazers, blouses, shirts, skirts, dresses and footwear; Bustiers; Bustle holder bands for obi (obiage); Bustles for obi-knots (obiage-shin); Button down shirts; Button-front aloha shirts; Caftans; Cagoules; Camiknickers; Camisettes; Camisoles; Camouflage gloves; Camouflage jackets; Camouflage pants; Camouflage shirts; Camouflage vests; Camp shirts; Canvas shoes; Cap peaks; Cap visors; Capelets; Capes; Capes for use in salons and barber shops; Capri pants; Capris; Caps being headwear; Caps with visors; Cardigans; Cargo pants; Cassocks; Cat suits; Catsuits; Chadors; Chappals; Chaps; Chasubles; Chef coats; Chef hats; Chef pants; Chef shirts; Chemises; Chemisettes; Cheongsams (Chinese gowns); 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; Children's headwear; Children's underwear; Choir robes; Christening gowns; Christening robes; Clam diggers; Cleats for attachment to sports shoes; Climbing boots; Climbing footwear; Climbing shoes; Cloaks; Cloche hats; Clogs; Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Clothing extension used to extend the normal size range of clothing items to accommodate pregnancy size changes; 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; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing items, namely, adhesive pockets that may be affixed directly to the body as a decorative piece of clothing with utility; Clothing items, namely, adhesive pockets that may be affixed directly to the inside of clothing for storage and safekeeping of personal items; Clothing items, namely, blindfolds worn over the eyes; Clothing items, namely, gags worn over the mouth; Clothing layettes; Clothing shields, namely, pads applied to the underarms of shirts, blouses and sweaters; Clothing wraps; Clothing, namely, arm warmers; Clothing, namely, base layers; Clothing, namely, cowls and smoke ring scarves; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, maternity bands; Clothing, namely, neck tubes; Clothing, namely, neck warmers; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Coats; Coats for men and women; Coats made of cotton; Coats of denim; Cobblers' aprons; Cocktail dresses; Coifs; Collar guards for protecting clothing collars; Collar liners for protecting clothing collars; Collar protector pads for application to clothing collars; Collar protector strips for application to clothing collars; Collared shirts; Collars; Combative sports uniforms; Combinations; Competitors' numbers of textile; Corduroy pants; Corduroy shirts; Corduroy trousers; Corselets; Corsets being clothing; Corsets being foundation clothing; Corsets being underclothing; Costumes for use in children's dress up play; Costumes for use in role-playing games; Costumes for use in the amusement industry; Coveralls; Coverups; Cowboy hats; Cravates; Cravats; Creepers; Crew neck sweaters; Crew necks; Crop pants; Crop tops; Cross-country gloves; Cross-country mittens; Cuffs; Culottes; Cummerbunds; Custom made to measure suits for men and women; Cycling bib shorts; Cycling caps; Cycling shoes; Cycling shorts; Cyclists' jerseys; Dance costumes; Dance pants; Dance shoes; Dance slippers; Deck-shoes; Denim jackets; Denim jeans; Denim pants; Denims; Detachable collars; Detachable neckpieces for kimonos (haneri); Disposable slippers; Disposable underwear; Do rags for use as headwear; Down jackets; Down suits; Drawers as clothing; Dress pants; Dress shields; Dress shirts; Dress shoes; Dress straps; Dress suits; Dresses; Dresses made from skins; Dresses that may also be used as towels; Dressing gowns; Dressing gowns and bath robes; Drivers as shoes; Driving gloves; Dry suits; Duffle coats; Dungarees; Dust coats; Dusters in the nature of coats; Ear bands; Ear muffs; Ear warmers; Ear warmers being clothes; Earbands; Earmuffs; Embossed soles and heels of rubber or of plastic materials; Espadrilles; Esparto shoes or sandals; Eternity scarves; European football bibs; Evening coats; Evening dresses; Evening gowns; Eyeshades as headwear; Fabric belts; Fascinator hats; Fashion hats; Fedoras; Fezzes; Fichus; Fight shorts for mixed martial arts or grappling; Fingerless gloves; Fingerless gloves as clothing; Finished textile linings for garments; Fishermen's jackets; Fishing shirts; Fishing vests; Fishing waders; Fitted heel protectors for shoes; Fitted shoe or boot covering to protect the shoes or boot from water or other damage; Fitted swimming costumes with bra cups; Fleece bottoms; Fleece jackets; Fleece pullovers; Fleece shorts; Fleece tops; Fleece vests; Flight suits; Flip flops; Flip-flops for use as footwear; Flood pants; Flower headdresses; Foam pedicure slippers; Foot volleyball shoes; Football boots; Football boots and studs therefor; Football shoes; Football uniforms; Footies; Footwear; Footwear; Footwear for men; Footwear for men and women; Footwear for track and field athletics; Footwear for women; Footwear made of vinyl; Footwear made of wood; Footwear not for sports; Footwear uppers; Footwear, namely, pumps; Footwear, namely, rubbers; Footwear, namely, work boots; Formalwear, namely, dresses, gowns, tuxedos, dinner jackets, trousers and footwear; Foul weather gear; Foulards; Foundation garments; Foundation garments worn around the midsection or thighs to keep the stomach in and create a slimming effect; Frocks; Full-length kimonos (nagagi); Fur cloaks; Fur coats; Fur coats and jackets; Fur hats; Fur jackets; Fur muffs; Fur stoles; Furs being clothing; G-strings; Gaberdines; Gaiter straps; Gaiters; Gaiters of leather; Galoshes; Garrison caps; Garter belts; Garters; Gauchos; Gift packages sold as a unit consisting primarily of a sweatshirt and also including a photo frame, a coffee mug, and a tote bag; Gilets; Girdles; Gloves; Gloves as clothing; Gloves for apparel; Gloves for personal hand conditioning use; Gloves including those made of skin, hide or fur; Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; Golf caps; Golf cleats; Golf pants, shirts and skirts; Golf shirts; Golf shoes; Golf shorts; Golf spikes; Golf trousers; Goloshes; Gowns; Graphic T-shirts; Greatcoats; Gym boots; Gym pants; Gym shorts; Gym suits; Gymnastic shoes; Hairdressing capes; Half-boots; Halloween costumes; Halloween costumes and masks sold in connection therewith; Halter tops; Handball shoes; Hat frames; Hat liners; Hats; Hats for infants, babies, toddlers and children; Head scarves; Head sweatbands; Head wear; Head wraps; Headbands; Headbands against sweating; Headbands for clothing; Headwear; Heavy coats; Heavy jackets; Heel inserts; Heel pieces for shoes; Heelpieces for footwear; Heelpieces for stockings; Heels; Helmet liners being headwear; Henley shirts; High rain clogs (ashida); Hijabs; Hiking boots; Hiking jackets; Hiking trousers; Hip-guards especially made for fishing; Hockey shoes; Hooded pullovers; Hooded sweat shirts; Hooded sweatshirts; Hoodies; Hoods; Hoods; Horse-riding boots; Horse-riding pants; Hosiery; Housecoats; Hunting boot bags; Hunting boots; Hunting jackets; Hunting pants; Hunting shirts; Hunting vests; Infant and toddler one piece clothing; Infant sleepers being clothing; Infant wear; Infant wearable blankets; Infants' shoes and boots; Infants' trousers; Infantwear; Infinity scarves; Inner soles; Insoles; Insoles; Insoles for footwear; Jacket liners; Jackets; Jackets and socks; Jackets incorporating backpacks; Jandals; Japanese footwear of rice straw (waraji); Japanese sleeping robes (nemaki); Japanese split-toed work footwear (jikatabi); Japanese style clogs and sandals; Japanese style sandals (zori); Japanese style sandals of felt; Japanese style sandals of leather; Japanese style socks (tabi covers); Japanese style socks (tabi); Japanese style wooden clogs (geta); Japanese toe-strap sandals (asaura-zori); Jeans; Jeggings; Jeggings, namely, pants that are partially jeans and partially leggings; Jerkins; Jerseys; Jodhpurs; Jogging outfits; Jogging pants; Jogging suits; Judo suits; Judo uniforms; Jump suits; Jumper dresses; Jumpers; Jumpsuits; Kaftans; Karate suits; Karate uniforms; Keffiyehs (Yashmaghs); Kendo outfits; Kerchiefs; Kilts; Kimonos; Kippahs (yarmulkes); Knee highs; Knee-high stockings; Knickers; Knit bottoms; Knit dresses; Knit face masks; Knit jackets; Knit shirts; Knit skirts; Knit tops; Knitted baby shoes; Knitted caps; Knitted gloves; Knitted underwear; Knot caps; Knotted caps; Korean outer jackets worn over basic garment; Korean topcoats; Korean ?traditional tops as clothing (Jeogori); Lab coats; Lace boots; Ladies' boots; Ladies' suits; Ladies' underwear; Leather belts; Leather boots; Leather coats; Leather harnesses worn by people as clothing; Leather hats; Leather headwear; Leather jackets; Leather pants; Leather shirts; Leather shoes; Leather skirts; Leather slippers; Leather vests; Leg shapers; 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; Leg warmers; Leg-warmers; Leggings; Leggins; Leisure shoes; Leisure suits; Leotards; Leotards and tights for women, men and children of nylon, cotton or other textile fibers; Light-reflecting coats; Light-reflecting jackets; Lingerie; Lingerie accessories, namely, removable silicone breast enhancer pads used in a bra; Live flower headdresses; Liveries; Loafers; Long jackets; Long johns; Long sleeve pullovers; Long sleeved vests; Long underwear; Long-sleeved shirts; Lounge pants; Loungewear; Low wooden clogs (hiyori-geta); Low wooden clogs (koma-geta); Maillots; Maniples; Mankinis; Mantillas; Mantles; Mantles; Martial arts uniforms; Martial arts uniforms, namely, gis; Masquerade costumes; Masquerade costumes and masks sold in connection therewith; Maternity bras; Maternity leggings, namely, leggings featuring built-in maternity bands; Maternity lingerie; Maternity sleepwear; Men's and women's jackets, coats, trousers, vests; Men's dress socks; Men's socks; Men's suits; Men's suits, women's suits; Men's underwear; Metal fittings for Japanese style wooden clogs; Military boots; Millinery, namely, fascinators; Miniskirts; Mittens; Mittens modified to cover the hand and an animal leash handle or other loop; Mixed martial arts suits; Moccasins; Mock turtle-neck sweaters; Mocknecks; Moisture-wicking sports bras; Moisture-wicking sports pants; Moisture-wicking sports shirts; Money belts; Monokinis; Morning coats; Motorcycle gloves; Motorcycle jackets; Motorcycle rain suits; Motorcyclist boots; Mountaineering boot liners; Mountaineering boots; Mountaineering shoes; Mufflers as neck scarves; Muffs; Mukluks; Mules; Muscle tops; Muu muus; Neck bands; Neck gaiters; Neck scarfs; Neck scarves; Neckerchiefs; Neckerchieves; Neckties; Neckwear; Negligees; Night gowns; Night shirts; Nightcaps; Nightdresses; Nightgowns; Nighties; Nightshirts; Nightwear; Nipple covers, namely, pasties; Niqabs; Non-disposable cloth training pants; Non-slip socks; Non-slip soles for footwear; Novelty headwear with attached wigs; Nurse dresses; Nurse overalls; Nurse pants; Nursing bras; Nursing shoes; Obis; One piece garment for infants and toddlers; One-piece garments for children; One-piece play suits; Open-necked shirts; Outdoor gloves; Outdoor mittens; Outer jackets; Over coats; Over shirts; Over-trousers; Overalls; Overalls for use in salons and barber shops; Overcoats; Overshoes; Oxford shoes; Padded jackets; Padding jackets; Pajama bottoms; Pajamas; Pajamas treated with fire and heat retardants; Pantaloons; Panties; Panties, shorts and briefs; Pants; Pantsuits; Pantyhose; Paper aprons; Paper hats for use as clothing items; Paper shoes used when going through metal detectors to keep feet and socks clean; Paraments; Pareos; Pareu; Pareus; Parkas; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Parts of clothing, namely, underarm gussets; Pashmina shawls; Patient slippers; Pea coats; Peacoats; Pedal pushers; Pedicure sandals; Pedicure slippers; Peignoirs; Pelerines; Pelisses; Perspiration absorbent strap to be used in the bill of a hat; Perspiration absorbent underwear clothing; Petti-pants; Petticoats; Pinafore dresses; Pinafores; Pinnies in the nature of scrimmage vests for use in sports; Pique shirts; Plastic aprons; Plastic baby bibs; Plastic slippers used in the airport environment when going through security to keep feet and socks clean, dry and sanitary; Plastic socks used in the airport environment when going through security to keep feet clean, dry and sanitary; Platform shoes; Play suits; Pleated skirts; Pleated skirts for formal kimonos (hakama); Plimsolls; Plus fours; Pocket kerchiefs; Pocket squares; Pockets for clothing; Polo knit tops; Polo shirts; Polymer custom cushioned shoe inserts for primarily non-orthopedic purposes; Ponchos; Posing suits for bodybuilding competitions; Pram suits; Prayer shawls; Protective metal members for shoes and boots; Protective neck and arm guards made of neoprene or other materials to prevent wetsuit chafing; Pullovers; Pumps as footwear; Puttees; Puttees and gaiters; Pyjamas; Pyjamas; Quilted vests; Race number belts that hold a paper number on the race participant's front or back during competition; Rain boots; Rain coats; Rain hats; Rain jackets; Rain slickers; Rain suits; Rain trousers; Rain wear; Raincoats; Rainproof jackets; Rainwear; Ramie shirts; Rash guards; Rash vests; Ready-made linings being parts of clothing; Redingotes; Removable breast enhancer pads used in bras or swimsuits; Removable collars; Reversible jackets; Riding boots; Riding coats; Riding gloves; Riding jackets; Riding shoes; Robes; Rompers; Ruanas; Rubber and latex costumes for use in the fashion industry; Rubber shoes; Rubber soles for jikatabi; Rubbers; Rugby shirts; Rugby shoes; Rugby shorts; Rugby tops; Running costumes; Running pads that strap onto shoes; Running shoes; Running suits; Russian felted boots (Valenki); Sabots; Safari jackets; Sailor suits; Salopettes; Sandal-clogs; Sandals; Sandals and beach shoes; Sarees; Saris; Sarongs; Sash bands for kimono (obi); Sashes; Sashes for wear; Scarfs; Scarves; School uniforms; Scrimmage vests; Scrub tops and pants not for surgical purposes; Sedge hats (suge-gasa); Serapes; Shampoo capes; Shapewear; Shawls; Shawls; Shawls and headscarves; Shawls and stoles; Sheepskin coats; Sheepskin jackets; Shell jackets; Shifts as clothing; 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; Shoe accessories, namely, fitted decorative covers for shoes; Shoe covers for use when wearing shoes; Shoe inserts for primarily non-orthopedic purposes; Shoe inserts for primarily non-orthopedic purposes that also deodorize shoes; Shoe liners; Shoe soles; Shoe soles for repair; Shoe straps; Shoe uppers; Shoes; Shoes for protection of airline passengers' feet during airport security screening; Shoes with hook and pile fastening tapes; Short overcoat for kimono (haori); Short petticoats; Short sets; Short trousers; Short-sleeve shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Shortalls; Shorts; Shoulder scarves; Shoulder wraps; Shoulder wraps for clothing; Shower caps; Shrugs; Silk scarves; Singlets; Skapris; Skating outfits; Ski and snowboard shoes and parts thereof; Ski bibs; Ski boot bags; Ski boot cases; Ski boot liners; Ski boots; Ski gloves; Ski jackets; Ski masks; Ski pants; Ski suits; Ski suits for competition; Ski trousers; Ski wear; Skiing shoes; Skirt suits; Skirts; Skirts and dresses; Skiwear; Skooters; Skorts; Skull caps; Skullies being headwear; Slacks; Sleep masks; Sleep pants; Sleep shirts; Sleeping garments; Sleepsuits; Sleepwear; Sleepwear treated with fire and heat retardants; Sleeved or sleeveless jackets; Sleeveless jerseys; Sleeves worn separate and apart from blouses, shirts and other tops; Sliding shorts; Slip-on shoes; Slipovers; Slipper socks; Slipper soles; Slippers; Slips being underclothing; Small hats; Smocks; Smoking jackets; Snap crotch shirts for infants and toddlers; Sneakers; Snow boarding suits; Snow boots; Snow pants; Snow suits; Snowboard boot liners; Snowboard boots; Snowboard gloves; Snowboard jackets; Snowboard mittens; Snowboard pants; Snowboard trousers; Soccer bibs; Soccer boots; Soccer shoes; Sock suspenders; Socks; Socks and stockings; Soles; Soles for footwear; Soles for Japanese style sandals; Spats; Spiked running shoes; Sport coats; Sport shirts; Sport stockings; Sports bra; Sports bras; Sports caps and hats; Sports jackets; Sports jerseys; Sports jerseys and breeches for sports; Sports over uniforms; Sports overuniforms; Sports pants; Sports shirts; Sports shirts with short sleeves; Sports shoes; Sports singlets; Sports vests; Stiletto heels; Stocking caps; Stocking hats; Stocking suspenders; Stockings; Stoles; Strapless bras; Strapless brassieres; Straps for bras; Stretch pants; String fasteners for haori (haori-himo); Studs for football boots; Stuff jackets; Suede jackets; Suit coats; Suits; Suits of leather; Sun leggings; Sun sleeves; Sun visors being headwear; Sundresses; Sunsuits; Surf wear; Suspender belts; Suspender belts for men; Suspender belts for women; Suspenders; Suspenders; Swaddling clothes; Sweat bands; Sweat jackets; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; Sweat-absorbent socks; Sweat-absorbent stockings; Sweat-absorbent underclothing; Sweat-absorbent underwear; Sweatbands; Sweaters; Sweatpants; Sweatshirts; Sweatsocks; Sweatsuits; Swim caps; Swim suits; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming caps; Swimming caps; Swimming costumes; Swimming trunks; Swimsuits; Swimwear; T-shirts; Tabards; Taekwondo uniforms; Tailleurs; Tallitot; Tallits; Tams; Tangas being swimwear; Tangas being underwear; Tank tops; Tank-tops; Tankinis; Tap pants; Tap shoes; Teddies being underclothing; Tee shirts; Tee-shirts; Tennis dresses; Tennis shoes; Tennis wear; Thermal socks; Thermal underwear; Thigh high stockings; Thong beachwear; Thong footwear; Thong sandals; Thong underwear; Ties as clothing; Tightening-up strings for kimonos (datejime); Tights; Tips for footwear; Toboggan hats; Toboggan hats, pants and caps; Toe boxes; Toe caps; Toe socks; Toe straps for Japanese style sandals (zori); Toe straps for Japanese style wooden clogs; Togas; Tongue or pullstrap for shoes and boots; Top coats; Top hats; Topcoats; Tops as clothing; Toques; Torsettes; Track and field shoes; Track jackets; Track pants; Track suits; Tracksuits; Traction attachments for footwear; Training shoes; Training suits; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Trekking boots; Trekking jackets; Trekking trousers; Trench coats; Trews; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Trouser socks; Trouser straps; Trousers; Trousers for sweating; Trousers of leather; Trunks being clothing; Tube dresses; Tube skirts; Tube tops; Tunics; Tuques; Turbans; Turtle neck shirts; Turtleneck pullovers; Turtleneck sweaters; Turtlenecks; Tutus; Tuxedo belts; Tuxedos; Twin sets; Under garments; Underarm clothing shields; Underclothes; Underclothing; Undergarment accessories, namely, removable silicone buttock enhancer pads; Undergarments; Undergarments, namely, waspies; Underpants; Undershirts; Undershirts for kimonos (juban); Undershirts for kimonos (koshimaki); Underskirts; Underwear; Underwear, namely, boy shorts; Uniforms; Union suits; Unitards; Uppers for Japanese style sandals; Uppers of woven rattan for Japanese style sandals; Ushankas being headwear; V-neck sweaters; Valenki; Veils; Vest extenders; Vested suits; Vests; Vests for use in barber shops and salons; Viscous gel polymer sold as a component of finished custom cushioned footwear for non-orthopedic purposes and apparel; Visors being headwear; Volleyball jerseys; Volleyball shoes; Waist bands; Waist belts; Waist cinchers; Waist strings for kimonos (koshihimo); Waistband extender consisting of a button and button hole mounted on a strip of fabric that is inserted into the existing waistband of a garment; Waistbands; Waistcoats; Walking shorts; Warm up outfits; Warm up suits; Warm-up suits; Water repelling boots; Water repelling footwear; Water repelling leather boots; Water repelling leather shoes and boots; Water ski boot liners; Water socks; Waterproof boots; Waterproof footwear; Waterproof jackets and pants; Waterproof leather boots; Waterproof leather shoes; Waterproof leather shoes and boots; Waterskiing suits; Wearable blankets in the nature of blankets with sleeves; Wearable computers in the nature of activity trackers sold as integral components of running shoes; Wearable garments and clothing, namely, shirts; Wedding dresses; Wedding garters; Wedding gowns; Wedge sneakers; Wellington boots; Welts for boots and shoes; Welts for footwear; Wet suit gloves; Wet suits; Wet suits for water-skiing; Wet suits for water-skiing and sub-aqua; Wetsuits; Wetsuits for surfing; Wetsuits for water-skiing; Wimples; Wind coats; Wind pants; Wind resistant jackets; Wind shirts; Wind suits; Wind vests; Wind-jackets; Wind-resistant vests; Windbreakers; Windcheaters; Windjammers; Windshirts; Winter boots; Winter coats; Women's athletic tops with built-in bras; Women's ceremonial dresses; Women's clothing, namely, shirts, dresses, skirts, blouses; Women's foldable slippers; Women's hats and hoods; Women's shoes; Women's shoes, namely, foldable flats; Women's tops, namely, camis; Women's underwear; Wooden clogs; Wooden main bodies of Japanese style wooden clogs; Wooden shoes; Wooden supports of Japanese style wooden clogs; Woollen socks; Woollen tights; Woolly hats; Work shoes and boots; Working overalls; Woven bottoms; Woven dresses; Woven or knitted underwear; Woven shirts; Woven skirts; Woven tops; Wrap belts for kimonos (datemaki); Wraparound skirts; Wrist bands as clothing; Wristbands as clothing; Wristbands containing a cooling substance to cool the wearer; Yoga pants; Yoga shirts; Yoga socks; Yoga tops; Zoot suits; Zori”. The registered marks are:
1) Registration No. 5585893, MATE THE LABEL for “Bottoms as clothing; Dresses; Hoodies; Pants; Rompers; Sweatshirts; T-shirts; Tank tops; Jackets”
2) Registration No. 5747926, MATES for “Clothing, namely, t-shirts, polo shirts, hoods, jerseys, undershirts, sweat shirts, jackets, head scarves, bandanas, neckerchiefs; headwear; footwear; belts of leather”.
3) Registration No. 5705872, MATES for “Clothing, namely, t-shirts, polo shirts, hoods, jerseys, undershirts, sweat shirts, jackets, head scarves, bandanas, neckerchiefs; headwear; footwear; belts of leather”.
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
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).
In the present case, the applicants mark MATE 12 is similar to the registrant’s marks in sound, appearance and connotation. All of the marks share the identical dominant wording which is the term MATE. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
The term MATE is the dominant feature of the applicants mark because it is the first word of the applicants mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Therefore based on the above the marks are confusingly similar.
Relatedness of the Goods
The applicant’s goods are similar to the registrants’s goods of “Bottoms as clothing; Dresses; Hoodies; Pants; Rompers; Sweatshirts; T-shirts; Tank tops; Jackets”; “Clothing, namely, t-shirts, polo shirts, hoods, jerseys, undershirts, sweat shirts, jackets, head scarves, bandanas, neckerchiefs; headwear; footwear; belts of leather” because all the goods consist of clothing. In fact the applicant has the identical goods of the registrants.
Based on the above the goods are related.
Conclusion
Since the marks are similar which creates the same commercial impression and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods. Therefore, the applicant’s mark is not entitled to registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 88570672, 88524844, 88341537 and 88214350. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
U.S. COUNSEL REQUIRED
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).
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
Lewis, Lakeisha M.
/Lakeisha S. Munn Lewis/
Trademark Examining Attorney
Law Office 105
(571)272-1910
Lakeisha.Lewis@uspto.gov
RESPONSE GUIDANCE
