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:  November 21, 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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal- Likelihood of Confusion
• Prior Filed Applications
• Identification of Goods
• Suspension Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 1930765, 2379790, 3275840, 3735745, 3605359, 4721214, 5203964, 5332973, and 5204051, and also 5046044 and   5046045. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration(s).

 

The mark in the application is FLEXFIT in standard characters for various apparel in class 25, and also various foundation and compressive garments in class 10, and all of the classes include bras and undergarments.

 

The 1930765, 2379790, 3275840, 3735745, 3605359, 4721214, 5203964, 5332973, and 5204051 cited marks are call contain the wording FLEX FIT or FLEXFIT, and are for various apparel items in class 25.

 

The 5046044 and 5046045 cited marks are COMFORT FLEX FIT in standard characters and COMFORT FLEX FIT and design in special format, for bras and undergarments excluding the goods in the 1930765, 2379790, 3275840, 3735745, 3605359, 4721214, 5203964, 5332973, and 5204051 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 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.

 

Comparison of the Marks:

 

Applicant’s mark is FLEXFIT displayed in a standard characters format.  The cited 1930765, 2379790, 3275840, 3735745, 3605359, 4721214, 5203964, and 5332973 marks are owned by the same registrant.  The 1930765 mark is FLEX FIT & design displayed in a special format. The 2379790 and 3275840 marks are FLEXFIT in typed and standard characters formats. The 3735745 mark is FLEXFIT UNIQUE TECHNOLOGY AND SUPERIOR COMFORT in standard characters.  The 3605359 mark is FLEXFIT THE ONE AND ONLY ORIGINAL in standard characters.  The 4721214 marks is FLEXFIT DELTA in standard characters.

 

The 5046044 and 5046045 marks are owned by the same registrant.  The marks are COMFORT FLEX FIT in standard characters and COMFORT FLEX FIT & design in a special format.

 

The marks have the same overall commercial impression because all of the marks include the wording FLEXFIT or the very similar wording FLEX FIT.

 

The applied-for mark and the marks in the 2379790 and 3275840 registrations are identical. 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. 

 

The ‘765, ‘973, ‘964, ‘051, and ‘045 cited marks include design elements not found in applicant’s mark. However, the wording in both marks sound identical and look very similar. Further, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

The remaining cited marks contain additional wording not found in the applied-for mark, but all of the marks contain the wording FLEXFIT. Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

In sum, given the highly similar appearance and sound of the marks, it follows that the marks create a highly similar commercial impression and therefore the marks are confusingly similar.

 

Relatedness of the Goods:

 

Applicant’s goods are:

 

“men's and women's athletic wear, shapewear, and active wear, namely, long sleeve shirts, short sleeve shirts, T-shirts, sleeveless shirts, tops, tank tops, camisoles, vests, singlets, jackets, tracksuits, pants, tights, leggings, capris, shorts, body suits, girdles, bras, sports bras, chest binders, panties, boxer briefs, boxer shorts, sleepwear, leg warmers, arm warmers, socks, and gloves” and

 

“compression garments for non medical use, namely, long sleeve shirts, short sleeve shirts, T-shirts, sleeveless shirts, tops, tank tops, camisoles, vests, singlets, jackets, tracksuits, pants, tights, leggings, capris, shorts, body suits, girdles, bras, sports bras, chest binders, panties, boxer briefs, boxer shorts, sleepwear, leg warmers, arm warmers, socks, and gloves; post-surgical medical compressive garments, namely, face masks, chin straps, shirts, jackets, camisoles, tanks, vests, bras, and compression and protective sleeves for arms, legs, ankles, feet, hands and joints, all of the foregoing in the nature of a supportive foundation garment used to reduce post-surgery or post-pregnancy swelling and discomfort and aid in support of recovery; post-surgical medical compressive garments, namely, bras, bodysuits, leggings, capris, pants, yoga pants, tights, shorts, underwear, boxer briefs, boxer shorts, panties, bras, girdles, socks, gloves; wraps and binding garments for wrist, ankle, hand, head, neck, face, abdominal and back, all of the foregoing in the nature of a supportive foundation garment used to reduce post-surgery or post-pregnancy swelling and discomfort and aid in support of recovery.”

 

The goods in the 1930765 registration are “clothing and clothing accessories, namely rag tops, crop tops, muscle tops, shirts, T-shirts, sweatshirts, jackets, gym trunks, shorts, pants, sweatpants, bras, headbands, sweatbands, hats, caps, gloves, and workout gloves.”

 

The goods in the 2379790 registration are “hats and caps.”

 

The goods in the 3275840 registration are “athletic footwear, namely, running shoes, sneakers.”

 

The goods in the 3735745 registration are “Headwear, namely, hats, caps, visors, beanies, berets, knitted caps and sweatbands as part of headwear; clothing and clothing accessories, namely, standalone sweatbands.”

 

The goods in the 3605359 registration are “Headwear, namely, hats, caps, visors, beanies, berets, knitted caps and sweatbands as part of headwear; clothing and clothing accessories, namely, standalone sweatbands.”

 

The goods in the 4721214, 5203964, 5332973, and 5204051 registrations are “Headwear, namely, hats, caps, cap peaks, visors, beanies, berets, knitted caps and top hats; clothing and clothing accessories, namely, headbands and sweatbands.”

 

The goods in the 5046044 and 5046045 registrations are “Bras; undergarments, excluding headwear, footwear, sportswear, outerwear, and sweatbands [i.e., the goods in all of the other cited registrations].”

 

As the case law and attached evidence shows, applicant’s and registrant’s goods and/or services are commercially related.

 

The compared goods and/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).

 

The attached Internet evidence from Under Armour, Nike, Adidas, Alchemy of the Ride, and Leonisa establishes that the same entity commonly manufactures/produces/provides the relevant goods and/or services and markets the goods and/or services under the same mark and 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).

 

For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

 

Further, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of a representative sample of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely compression garments and clothing, headwear, and/or shoes are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

In total, the marks create the same commercial impression and the evidence shows that the goods and/or services are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the goods and/or services originate from a common source. Therefore, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Lanham Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

PRIOR-FILED APPLICATION(S)

 

The filing date of pending U.S. Application Serial No(s). 88501244 and 88501248 precedes applicant’s filing date.  See attached referenced application(s).  If the mark(s) in the referenced application(s) register(s), applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application(s).

 

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 mark(s) in the referenced application(s).  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.

 

IDENTIFICATION OF GOODS

 

The identification for class 25 is acceptable.

 

Applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is not acceptable in this case because it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services. See TMEP §1402.03(a). 

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Applicant may adopt the following wording, if accurate: 

 

Class 10          compression garments for non medical use, namely, long sleeve shirts, short sleeve shirts, T-shirts, sleeveless shirts, tops, tank tops, camisoles, vests, singlets, jackets, tracksuits, pants, tights, leggings, capris, shorts, body suits, girdles, bras, sports bras, chest binders, panties, boxer briefs, boxer shorts, sleepwear, leg warmers, arm warmers, socks, and gloves; post-surgical medical compressive garments, namely, face masks, chin straps, shirts, jackets, camisoles, tanks, vests, bras, and compression and protective sleeves for arms, legs, ankles, feet, hands and joints, all of the foregoing in the nature of a supportive foundation garment used to reduce post-surgery or post-pregnancy swelling and discomfort and aid in support of recovery; post-surgical medical compressive garments, namely, bras, bodysuits, leggings, capris, pants, yoga pants, tights, shorts, underwear, boxer briefs, boxer shorts, panties, bras, girdles, socks, gloves; wraps and binding garments for wrist, ankle, hand, head, neck, face, abdominal and back, all of the foregoing in the nature of a supportive foundation garment used to reduce post-surgery [[or]] and  post-pregnancy swelling and discomfort and aid in support of recovery

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

SUSPENSION ADVISORY

 

Upon resolution of all issues raised herein, applicant is advised that the application may be suspended pending final disposition of the earlier-filed referenced application. 

 

RESPONSE GUIDELINES

 

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. 

 

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. 

 

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  

 

 

/Esther Queen/

Examining Attorney

LO 111

571-272-6695

Esther.Queen@uspto.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 November 21, 2019 for

U.S. Trademark Application Serial No. 88579931

 

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. 

 

 

/Esther Queen/

Examining Attorney

LO 111

571-272-6695

Esther.Queen@uspto.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 November 21, 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.”