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:  December 01, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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 with registered marks;

·         Advisory on pending applications (no response required)

·         Identification of goods requirement;

·         Multiple-class application requirements, if applicable.

 

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. 5441485; 5402475; 5382471; 4958237; 4909267; 3925626; 4349213; 5293312; 5144071; 4261673; 3884402; 3089349.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant seeks to register the mark GO and an incomplete circle design “for use with Hats, all clothing, bags, travel items. Printed media.”   The registered marks are as follows:

Reg. No.	Mark	Relevant Goods/Services
5441485	GO (stylized)	International Class 25: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
5402475	GO (stylized)	International Class 25: T-shirts, hats, golf cleats, turf shoes, warm up jackets, sweatshirts, gloves, jerseys, uniforms.
5382471	GO (and design)	International Class 25: shirts, t-shirts
4958237	GO (and design)	International Class 16: Printed matter and publications, namely books, manuals, instruction manuals, handbooks, newsletters and reports in the field of completion and commissioning procedures in the oil and gas industry; printed instructional and teaching material in the field of completion and commissioning procedures in the oil and gas industry; stationery; calendars; notepads; printed paper signs and posters; engineering manuals in the form of printed matter; engineering documentation in the form of books, pamphlets, manuals and printed reports; printed guides for engineering and commissioning purposes; printed matter, namely books and manuals relating to computer programs; training material in printed or written form in the field of completion and commissioning procedures in the oil and gas industry
4909267	GO (and design)	International Class 25: Hats; Shirts; T-shirts.
3925626	GO (and design)	International Class 25: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Clothing, namely, arm warmers; Clothing, namely, base layers; Clothing, namely, neck tubes; Hoods; Jerseys; Moisture-wicking sports pants; Perspiration absorbent underwear clothing; Short sets; Tops; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Wearable garments and clothing, namely, shirts
4349213	GO (and design)	International Class 45: Missionary sending agency
5293312	GO (and design)	International Class 25: Clothing, namely, jackets, trousers, shirts, coats; footwear, headgear, namely, scarves and hats; outdoor clothing, namely, overcoats, rain jackets, parkas, rainproof and windproof cagoules, jackets, trousers, gloves and hats, raincoats; rainwear; waterproof ponchos; shoe covers; sleep masks, eye masks; plastic bibs for babies; money belts
5144071	GO (and design)	International Class 18: Travel bags; luggage; suitcases; handbags, backpacks, garment bags, roller bags, duffle bags, day bags, foldaway holdalls, suit bags, courier bags, adventure bags and tote bags; rucksack covers; protective liners for rucksacks; sports bags; waist wallets; purses, wallets; shoulder wallets and pouches; document wallets; passport wallets and pouches; cash carriers, namely, currency wallets and pouches; luggage straps and tags; leather tags; carry straps; umbrellas; wrist links for children; walking reins and harnesses for children
4261673	GO (standard characters)	International Class 11: Hair dryers
3884402	GO (standard characters)	International Class 11: Electric hair straightening irons
3089349	GO (standard characters)	International Class 25: MEN'S AND BOY'S WEARING APPAREL, NAMELY, T-SHIRTS, SWEATSHIRTS, TANK TOPS, WOVEN SHIRTS, SWEATERS, CARDIGANS, VESTS, JACKETS, PANTS, SWEATPANTS, JEANS, SHORTS, HATS, CAPS, COATS, SCARVES, NECKERCHIEFS, NECK BANDS, WRIST BANDS, HEAD BANDS, GLOVES, BELTS, PAJAMAS, SHOES, SOCKS, UNDERWEAR, SWIM WEAR, AND TRUNKS; AND WOMEN'S AND GIRL'S WEARING APPAREL, NAMELY, T-SHIRTS, SWEATSHIRTS, TANK TOPS, WOVEN SHIRTS, SWEATERS, CARDIGANS, VESTS, JACKETS, PANTS, SWEATPANTS, JEANS, SHORTS, HATS, CAPS, COATS, BELTS, SCARVES, NECKERCHIEFS, NECK BANDS, WRIST BANDS, HEAD BANDS, GLOVES, PAJAMAS, SHOES, SOCKS, UNDERWEAR, FOUNDATION GARMENTS, PANTYHOSE, TEDDIES, BRAS, SKIRTS, DRESSES, BLOUSES, SWIM WEAR, AND BIKINIS

 

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 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 this instance, the mark shown in the application is GO and a circular design.  The marks shown in the registrations are GO in standard or stylized characters or with a design element.  The applied-for mark is similar in sound and connotation to the registered marks because each comprises the sole literal element “GO.”  Such 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).

 

Although the marks may contain design elements or stylized lettering, this does sufficient to obviate the similar commercial impression created by the marks because the word portions are identical. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).  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)).

 

Comparison of Goods and Services

 

Determining likelihood of confusion is based on the description of the goods and/or services 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)).  

 

In this case, the application uses the wording to describe “Hats, all clothing, bags, travel items. Printed media” to describe the goods. 

 

The goods listed in Reg. Nos. 5441485, 5402475, 4909267, 3925626, 5293312, and 3089349 all include “hats.” The goods of the parties thus include those that are identical and presumed to travel in the same channels of trade.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  

 

In addition, the broad wording “all clothing” in the application is presumed to encompass the clothing items listed in Reg. Nos. 5441485, 5402475, 5382471, 4909267, 3925626, 5293312, and 3089349.  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, these goods are also identical in nature and trade channels.  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)).

 

The wording “bags” in the application is presumed to include all same types of bags listed in Reg. No. 5144071 and to travel in the same trade channels as these goods.  See id.

 

Similarly, the broad wording “travel items” in application is presumed to include the hair dryers and straightening irons listed in Reg. Nos. 4261673 and 3884402 because, as shown by the attached web pages,  these items are commonly manufactured in small sizes for travel.  See id.

 

Finally, the items described as “printed media” in the application are related to the services identified as “missionary sending agency” in the registration.  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).

 

In this instance, the subject matter of the printed media is not indicated and thus must be presumed to include any subjects. The attached Internet evidence, consisting of pages from the websites of THE CHURCH OF JESUS CHRIST OF LATTER-DAY SAINTS, ABWE, and applicant’s own GLOBAL OUTREACH MISSION, establishes that the same entity commonly provides the missionary agency services and printed media in the field of religion and markets these goods and services under the same mark through the same trade channels.  Thus, these goods and 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).

 

Therefore, the goods and services of the parties are related.

 

Conclusion

 

Because the compared marks are confusingly similar and the compared goods and services are related, it is likely that consumers would be confused as to the source of the goods and services should applicant’s mark be registered.  Therefore, registration of the applied-for mark is refused under 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.

 

Advisory—Potentially Conflicting Applications Found

 

The filing dates of pending U.S. Application Serial Nos. 88473473, 88371861, 88207664, and 79975167 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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.

 

However, if applicant responds to the Section 2(d) likelihood of confusion refusal, applicant must also respond to the issues set forth below.

 

Identification of Goods

 

The wording “hats, all clothing, bags, travel items. Printed media” in the identification of goods for International Class 25 must be clarified because it is too broad and includes goods in several international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

In particular, the wording “all clothing” is indefinite and too because it could include clothing for protection against accidents, irradiation and fire, which are in International Class 9; surgical gowns, in International Class 10; pet clothing  in International Class 18; or ordinary apparel such as “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s clothing is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

The wording “bags” is also indefinite and overly broad because it could include plastic or paper single-use bags in International Class 16; travel bags in International Class 18; or insulated food bags in International Class 21.

 

If applicant’s bags are in International Class 18, applicant may amend the identification to insert the word “namely,” after “bags” and then list the specific types of clothing items in that class (e.g., travel bags, shoulder bags, hand bags). 

 

The wording “travel items” could include a wide array of goods in several different classes, such as travel curling irons or hair dryers in International Class 11; travel clock in International Class 14; travel baggage in International Class 18; travel neck pillows in International Class 20; travel mugs in International Class 21; or clothing for travelling in International Class 25.  Applicant must therefore clarify the “travel items” and classify them appropriately.

 

Finally, the wording “printed media” identifies a variety of goods in International Class 16.  Applicant must specify the format and topic of the printed media (e.g., printed books in the field of travel.)

 

Applicant may substitute the following wording, if accurate: 

 

International Class 11: travel items, namely, {specify items in class 11, e.g., travel curling irons, hair dryers}

 

International Class 14: travel items, namely, {specify items in class 14, e.g., travel clocks}

 

International Class 16: printed media, namely, {specify format of media, e.g., books, magazines} in the field of {specify topic}

 

International Class 18: bags, namely, {specify types of bags in class 18, e.g., travel bags, shoulder bags, hand bags}

 

International Class 20: travel items, namely, {specify items in class 20, e.g., neck pillows for travelling}

 

International Class 21: travel items, namely, {specify items in class 21, e.g., travel mugs}

 

International Class 25: hats; clothing, namely, {specify items of clothing in class 25, e.g., shirts, pants, dresses}; travel items, namely, {specify specific items of clothing in class 25}

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the 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 or encompassed by those in the original 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.

 

Multiple-Class Application Requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted a fee(s) sufficient for only one class(es).  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.

 

Response Guidelines

 

For this application to proceed further, 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.

 

In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

Advisory on Legal Representation

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

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.    

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@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 December 01, 2019 for

U.S. Trademark Application Serial No. 88583715

 

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. 

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@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 December 01, 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.”