To: | Paradise East Records, LLC (stacy@yourcreativecounsel.com) |
Subject: | U.S. Trademark Application Serial No. 88577897 - 4L SLAUGHTER PDE 21 GANG 1 GANG - N/A |
Sent: | November 08, 2019 08:33:19 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88577897
Mark: 4L SLAUGHTER PDE 21 GANG 1 GANG
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Correspondence Address:
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Applicant: Paradise East Records, LLC
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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 08, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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).
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 and differences in the marks.”); TMEP §1207.01.
U.S. Registration No. 5101518 – 4L
Applicant’s and registrant’s marks are similar because they sound similar. Applicant’s mark is “4L SLAUGHTER GANG PDE 21 1 GANG” with design. Registrant’s mark is “4L” in standard characters. The marks sound similar because both marks share the inherently distinctive wording “4L”. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Moreover, the marks also look similar because they share the inherently distinctive wording “4L”. The additional wording in applicant’s mark does not change the similarity in the marks because it is very small and buried within the large and dominant wording “4L”. Thus, the main commercial impression of applicant’s mark is the wording “4L”. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
Additionally, registrant’s mark is in standard characters and thus affords the registrant the “broadest form of coverage” because it provides the registrant rights in the text itself in any possible depictions regardless of font style, size, or color. In re Calphalon Corp., 122 USPQ2d 1153, 1161 n.8 (TTAB 2017) (quoting Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011)); see 37 C.F.R. §2.52(a); TMEP §807.03(a).
Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).
U.S. Registration No. 5538677 – SLAUGHTER GANG
Similarly, applicant’s and registrant’s marks are similar because they sound similar. Applicant’s mark is “4L SLAUGHTER GANG PDE 21 1 GANG” with design. Registrant’s mark is “SLAUGHTER GANG” in standard characters. The marks sound similar because both marks share the inherently distinctive wording “SLAUGHTER GANG”. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Moreover, the marks look similar because they share the inherently distinctive wording “SLAUGHTER GANG”. The additional wording in applicant’s mark does not change the similarity in the marks because the wording “SLAUGHTER GANG” is placed in the middle of the mark and is visibly noticeable and easier to read compared to the other wording. For example, the wording “PDE” is harder to read because it is vertical and the letters “P” and “DE” are separated by the wording “SLAUGHTER”. Moreover, the wording “1 GANG” merely reinforces the wording “SLAUGHTER GANG” because the wording “GANG” is incorporated in the word “SLAUGHTER GANG”. Thus, a dominant feature of applicant’s mark is the wording “SLAUGHTER GANG” because it is centralized and visibly noticeable compared to the other wording. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
Additionally, registrant’s mark is in standard characters and thus affords the registrant the “broadest form of coverage” because it provides the registrant rights in the text itself in any possible depictions regardless of font style, size, or color. In re Calphalon Corp., 122 USPQ2d 1153, 1161 n.8 (TTAB 2017) (quoting Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011)); see 37 C.F.R. §2.52(a); TMEP §807.03(a).
Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).
Thus, there is a likelihood of confusion because the marks sound and look similar because they share inherently distinctive wording. As a result, the first part of the likelihood of confusion analysis is met.
Comparison of Goods
U.S. Registration No. 5538677 – SLAUGHTER GANG
A likelihood of confusion also exists because the goods are identical. Applicant provides “Baseball caps and hats; Beanies; Hoodies; Sweatshirts; T-shirts; Wearable garments and clothing, namely, shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts. Registrant (U.S. Registration No. 5538677) provides, “Headwear; Headwear for babies, adults, children, women, men; Jackets for babies, adults, children, women, men; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for babies, adults, children, women, men; A-shirts; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Graphic T-shirts; Hooded sweat shirts; Long-sleeved shirts; Short-sleeve shirts; Short-sleeved shirts; T-shirts; T-shirts for babies, adults, children, women, men”. Thus, applicant’s and registrant’s goods are identical because they both provide “caps”, “hats”, “sweatshirts”, “t-shirts”, “shirts”, “athletic apparel”, “pants”, “jackets”, “footwear”, “hooded sweatshirts”, and “short-sleeved or long-sleeved t-shirts”.
Where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
U.S. Registration No. 5101518 – 4L
Additionally, applicant’s and registrants’ goods are also related because registrants’ “clothing, namely, headwear, tops, bottoms” encompasses applicant’s more specific clothing items. 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 services 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). Specifically, applicant’s baseball caps, hats, and beanies are encompassed in registrant’s “headwear.” Moreover, applicant’s sweatshirts, t-shirts, shirts, athletic apparel, namely, shirts, and hooded sweatshirts are encompassed in registrant’s “tops”. Finally, applicant’s pants are encompassed in registrant’s “bottoms.” Thus, the goods are closely related because applicant’s goods are encompassed in registrants’ broad identification of goods.
Moreover, neither the application nor the registrations contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
Therefore, the goods are related because they are either identical or encompassed in the registrants’ goods. As a result, the second part of the likelihood of confusion analysis is met.
Purchasers are likely to be confused as to the source of applicant’s goods because the marks are confusingly similar and the goods are related. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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
Biftu, Beniam
/Ben Biftu/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 117
571-272-1525
bbiftu@uspto.gov
RESPONSE GUIDANCE