| To: | Fashioncentral LLC (kimberlykornesq@aol.com) |
| Subject: | U.S. Trademark Application Serial No. 88595304 - SIMPLY ADORABLE - N/A - Request for Reconsideration Denied - No Appeal Filed |
| Sent: | January 21, 2020 11:00:09 AM |
| Sent As: | ecom121@uspto.gov |
| Attachments: |
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. 88595304
Mark: SIMPLY ADORABLE
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Correspondence Address: |
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Applicant: Fashioncentral LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: January 21, 2020
Accordingly, the following requirements and refusals made final in the Office action dated December 23, 2019 are maintained and continued:
For the reasons set forth below, the refusal previously made final under Trademark Act Section 2(d) is now maintained and continued with respect to U.S. Registration No. 5240659. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Applicant’s mark is “SIMPLY ADORABLE” for use with, as amended:
Class 35: On-line wholesale and retail store services featuring bras, underwear, Footwear; football shoes; cleats for attachment to sports shoes; coats; belts for clothing; socks; headbands; hats; bandanas; hosiery; sweatbands; 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; visors being headwear; swim trunks
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
As discussed in the previous Office actions, 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 the Marks
Applicant's mark is “SIMPLY ADORABLE” and the registrant's mark is “THAT'S SIMPLY ADORABLE”. It is noted that in its December 23, 2019 and January 17, 2020 responses, applicant did not submit any arguments regarding the similarity of the marks.
The trademark examining attorney now incorporates herein by reference its arguments regarding the similarities of applicant's and the registrant's marks.
Therefore, the marks are confusingly similar.
Comparison of the Goods and Services
In its January 17, 2020 Office action, applicant seemingly argues that its goods are dissimilar from the registrant's goods because “Applicant makes socks which registrant does not.” See applicant's response at Page 1. The trademark examining attorney respectfully disagrees.
The evidence attached to the December 23, 2020 clearly demonstrates that providers of goods such as socks and providers of 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 commonly provide the same goods and services under the same mark. See evidence attached to the December 23, 2019 Office action from River Island, Missguided, and Rue21 showing goods such as socks and services such as on-line wholesale and retail store services featuring clothing provided by a single source under the same mark; the third-party evidence attached to the first Office action demonstrating the relatedness of the parties’ goods and services is incorporated herein by reference. 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 the final refusal of registration for the applied-for mark to be maintained and continued under Section 2(d) of the Trademark Act.
Applicant was previously refused registration in International Class 35 because the previous specimens did not show the applied-for mark in use in commerce in connection with any of the claimed services. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting a substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. Thus, the final refusal to register the applied-for mark in International Class 35 is now maintained and continued because applicant failed to provide evidence of use of the mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
Specifically, the current specimen merely shows the applied-for mark as used in connection with socks. However, applicant's Class 35 services are “On-line wholesale and retail store services featuring bras, underwear, footwear.” Thus, the specimen fails to show the applied-for mark in connection with applicant's claimed services.
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.
The requirement previously made final to amend the classification and identification of goods and services is maintained and continued.
Classification Amendment
Identification Amendment
In this case, the application, as amended, identifies the services as follows: “On-line wholesale and retail store services featuring bras, underwear, Footwear.”
However, a portion of the proposed amendment identifies the following services: “Online and retail services featuring headwear.”
This portion of the proposed amendment exceeds the scope of the current identification because it amends the goods featured through applicant's online and retail store services from bras, underwear, and footwear to headwear; these goods which are not identical in nature and thus not interchangeable. Further, the proposed amendment broadens the scope by claiming all types of retail services, whereas the previously accepted amendment was limited to retail services in the nature of online wholesale and retail store services.
As such, applicant's current identification reads as follows:
Class 35: On-line wholesale and retail store services featuring bras, underwear, Footwear; football shoes; cleats for attachment to sports shoes; coats; belts for clothing; socks; headbands; hats; bandanas; hosiery; sweatbands; 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; visors being headwear; swim trunks
The requirement previously made final to clarify the number of classes for which registration is sought is maintained and continued.
(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 2 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 applicant adds this class to the application; and applicant needs a specimen for class 35. 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.
The requirement previously made final to submit an additional processing fee per class for failure to comply with TEAS Plus requirements is maintained and continued.
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.
See TMEP §§715.03(a)(ii)(B), 715.04(a).
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov