United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88595304
Mark: SIMPLY ADORABLE
|
|
Correspondence Address: 275 WEST 96TH STREET SUITE 32D
|
|
Applicant: Fashioncentral LLC
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 27, 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 PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Specimen Refused
· Classification and Identification Amendment Required
· Multi-class Application Requirements
· TEAS Plus Status Lost—Additional Fee Required
· Entire Mark May Not be Disclaimed—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 in U.S. Registration No. 5240659. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is “SIMPLY ADORABLE”, for use with:
Class 35: On-line wholesale and retail store services featuring lingerie, shapewear, undergarments, panties, sleepwear, waistnippers,bras,nightgown Footwear; headwear; football shoes; cleats for attachment to sports shoes; jerseys; pants; shorts; t-shirts; shirts; sweatshirts; hooded sweatshirts; hoods; sweatpants; vests; tank tops; pullovers; warm-up suits; jackets; anoraks; coats; underwear; belts; sports bras; socks; wrist bands as clothing; headbands; hats; bandanas; hosiery; sweatbands; sweaters; skirts; dresses; scarves; gloves; athletic uniforms; athletic tights; compression sleeves sold as an integral component of athletic clothing, namely, for shirts; clothing for athletic use, namely, padded shirts, padded pants, padded shorts Sports bags; backpacks; duffle bags; messenger bags; tote bags; gym bags; drawstring pouches; waist bags; kit bags; trunks; luggage; suitcases; umbrellas; shoulder bags; belts made of leather and imitations of leather; leather straps Custom imprinting of apparel, sports apparel, fan gear and promotional items including jerseys, shirts, hats, jackets, socks, compression sleeves, blankets, water bottles and drinkware; custom imprinting of banners and signs with messages; design printing for others; screen printing; customized printing of team names and logos for others for promotional purposes Bandanas; Belts; Clothing, namely, athletic sleeves; Coats; Dresses; Footwear; Gloves; Hats; Headbands; Headwear; Hoods; Hosiery; Jackets; Jerseys; Pants; Pullovers; Scarves; Shirts; Shorts; Skirts; Socks; Sports bras; Sweat pants; Sweat shirts; Sweatbands; Sweaters; T-shirts; Tights; Underwear; Vests; Visors; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
The registered mark is “THAT'S SIMPLY ADORABLE”, for use with:
Class 35: On-line wholesale and retail store services featuring clothing, mugs, glassware, accessories, crochet items, photo props, home decor, patterns, monograms, embroidery, vinyl appliques
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 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 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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).
Applicant's mark is “SIMPLY ADORABLE” and the registrant's mark is “THAT'S SIMPLY ADORABLE”. Here, the applicant has merely deleted the term “THAT’S” from the registrant's mark to create its own mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, the marks are confusingly similar.
Comparison of Goods and Services
Determining likelihood of confusion is based on the description of the goods and 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 registration uses broad wording to describe “On-line wholesale and retail store services featuring clothing,” which presumably encompasses all services of the type described, including applicant’s more narrow “On-line wholesale and retail store services featuring lingerie, shapewear, undergarments, panties, sleepwear, waistnippers, bras, nightgown.” 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); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and services are related.
Further, the compared goods and 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).
Applicant's goods include footwear, pants, shirts, shoulder bags, and tote bags, and the registrant's services are on-line wholesale and retail store services featuring clothing, mugs, glassware, accessories, crochet items, photo props, home decor, patterns, monograms, embroidery, vinyl appliques. Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Urban Outfitters, Anthropologie, and Forever21 showing goods such as footwear, pants, shirts, shoulder bags, and tote bags and services such as on-line wholesale and retail store services featuring clothing, mugs, glassware, accessories, crochet items, photo props, home decor, patterns, monograms, embroidery, vinyl appliques provided by a single source under the same mark. Therefore, consumers familiar with the registrant's services will also expect applicant's goods to be provided by the registrant.
Conclusion
The relatedness of the goods and services here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSED
Specifically, the current specimen merely shows the applied-for mark as used in connection with goods sold through an Amazon storefront. Note that Amazon is an online marketplace service that allows users to post their goods on Amazon’s online retail store marketplace; that is, that applicant's goods are merely accessible via Amazon’s third-party website. See attached evidence from Amazon.
In this case, applicant is merely a user of such online retail services provided by Amazon. Applicant’s specimen shows only that applicant promotes its goods via Amazon, and communicates with its customers and potential customers over the online marketplace for retail store service purposes created by Amazon; this is facilitated by applicant having an Amazon account. As such, the specimen does not show that applicant independently provides online wholesale and retail store services for others.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
CLASSIFICATION AND IDENTIFICATION AMENDMENT REQUIRED
Classification Amendment
Applicant has classified the following goods in International Class 35: “headwear; football shoes; cleats for attachment to sports shoes; jerseys; pants; shorts; t-shirts; shirts; sweatshirts; hooded sweatshirts; hoods; sweatpants; vests; tank tops; pullovers; warm-up suits; jackets; anoraks; coats; underwear; belts; sports bras; socks; wrist bands as clothing; headbands; hats; bandanas; hosiery; sweatbands; sweaters; skirts; dresses; scarves; gloves; athletic uniforms; athletic tights; compression sleeves sold as an integral component of athletic clothing, namely, for shirts; clothing for athletic use, namely, padded shirts, padded pants, padded shorts Sports bags; backpacks; duffle bags; messenger bags; tote bags; gym bags; drawstring pouches; waist bags; kit bags; trunks; luggage; suitcases; umbrellas; shoulder bags; belts made of leather and imitations of leather; leather straps Custom imprinting of apparel, sports apparel, fan gear and promotional items including jerseys, shirts, hats, jackets, socks, compression sleeves, blankets, water bottles and drinkware; custom imprinting of banners and signs with messages; design printing for others; screen printing; customized printing of team names and logos for others for promotional purposes Bandanas; Belts; Clothing, namely, athletic sleeves; Coats; Dresses; Footwear; Gloves; Hats; Headbands; Headwear; Hoods; Hosiery; Jackets; Jerseys; Pants; Pullovers; Scarves; Shirts; Shorts; Skirts; Socks; Sports bras; Sweat pants; Sweat shirts; Sweatbands; Sweaters; T-shirts; Tights; Underwear; Vests; Visors; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.” However, the proper classification for each item is as follows in the suggested wording below.
Additionally, applicant has provided the application fee(s) for only 1 international class(es). Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Identification Amendment
Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 35 for “Belts; Coats; Dresses; Gloves; Hats; Headbands; Headwear; Hoods; Hosiery; Jackets; Jerseys; Pants; Pullovers; Scarves; Shirts; Shorts; Skirts; Socks; Sports bras; Sweat pants; Sweat shirts; Sweatbands; Sweaters; T-shirts; Underwear; Vests.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Suggested Wording
If accurate, applicant may adopt the following wording and classes:
Class 18: Sports bags; backpacks; duffle bags; messenger bags; tote bags; gym bags; drawstring pouches; waist bags; kit bags; trunks; luggage; suitcases; umbrellas; shoulder bags; leather straps
Class 25: headwear; football shoes; cleats for attachment to sports shoes; jerseys; pants; shorts; t-shirts; shirts; sweatshirts; hooded sweatshirts; hoods; sweatpants; vests; tank tops; pullovers; warm-up suits; jackets; anoraks; coats; underwear; belts; sports bras; socks; wrist bands as clothing; headbands; hats; bandanas; hosiery; sweatbands; sweaters; skirts; dresses; scarves; gloves; athletic uniforms; athletic tights; compression sleeves sold as an integral component of athletic clothing, namely, for shirts; clothing for athletic use, namely, padded shirts, padded pants, padded shorts; belts made of leather and imitations of leather; Bandanas; Clothing, namely, athletic sleeves; Footwear; Tights; Visors; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms
Class 35: On-line wholesale and retail store services featuring lingerie, shapewear, undergarments, panties, sleepwear, waist nippers, bras, nightgown, and footwear
Class 40: Custom imprinting of apparel, sports apparel, fan gear and promotional items including jerseys, shirts, hats, jackets, socks, compression sleeves, blankets, water bottles and drinkware; custom imprinting of banners and signs with messages; design printing for others; screen printing; customized printing of team names and logos for others for promotional purposes
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.
Applicant must additionally respond to the requirement below.
MULTI-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 25, if this class is added to the application; and applicant needs a specimen for classes 18, 35, and 40. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant must additionally respond to the requirement below.
TEAS PLUS STATUS LOST—ADDITIONAL FEE REQUIRED
Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04. Specifically, applicant failed to meet the following application filing requirement(s): A correctly classified and definite identification of goods/services taken directly from the USPTO’s Acceptable Identification of Goods and Services Manual ("USPTO ID Manual"), available through the TEAS Plus form.
The additional fee is required even if applicant later corrects these application requirements.
Applicant should additionally note the advisory below.
ENTIRE MARK MAY NOT BE DISCLAIMED—ADVISORY
RESPONSE GUIDELINES
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE