United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88598529
Mark: RICHARDSON
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Correspondence Address: PILLSBURY WINTHROP SHAW PITTMAN LLP 725 S. FIGUEROA STREET, SUITE 2800
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Applicant: Beatrix Felix LLC
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Reference/Docket No. 57989.506288
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 03, 2020
This Office action is in response to applicant’s communication filed on December 10, 2019, in which the applicant amended the identification of goods and services, claimed acquired distinctiveness under Section 2(f), and argued against the refusal under Trademark Act Section 2(d).
The Section 2(f) claim and amended identification of goods and services are acceptable, and have been entered in the record. Accordingly, the refusals under Trademark Act Sections 1 and 45; Sections 1, 2, 3, and 45; and Section 2(e)(4) are all obviated.
Upon further consideration, the refusal under Trademark Act Section 2(d) is withdrawn only as to cited U.S. Registration No. 3365829.
Section 2(d) Final Refusal as to 4506910
THIS PARTIAL REFUSAL APPLIES TO CLASS 025 ONLY
The December 5, 2019 Office Action refused registration under Trademark Act Section 2(d) for likelihood of confusion with U.S. Registration No. 4506910. Applicant argued against the refusal in the December 10, 2019 communication.
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
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.
Applicant’s mark is “Richardson”, and the relevant goods are:
“Streetwear clothing, namely, T-shirts, hoodies, jumpers, sweatshirts, shirts, pants, skirts, blouses, dresses, jackets, sweaters; underwear; caps being headwear; hats; socks”.
The registered mark is “R RICHARDSON”, and the identified goods are:
“Athletic uniforms; Beanies; Caps; Gloves; Hats; Jackets; Pants; Scarves; Shirts; Shorts; Sweat pants; Sweatshirts; Warm up outfits; Warm up suits ”.
In its response, Applicant asserts that confusion is unlikely because the registered mark contains an additional single letter “R” that is not present in the applied-for mark. However, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Contrary to Applicant’s arguments, the parties’ marks have a highly similar commercial impression based on shared wording, namely, that of the surname “Richardson”. In fact, the additional letter “R” calls attention to the marks’ shared wording since the “R” serves as an abbreviation for “Richardson”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In this case, Applicant’s response ignores the fact that the parties’ specify identical (e.g. “hats” “caps”) and closely related clothing items while improperly attempting to introduce limits on Registrant’s goods that are simply not present. In fact, only “athletic uniforms” (out of the fourteen types of clothing items in the registered identification) are specifically limited to athletic wear.
An attached definition of “streetwear” defines such clothing as “fashionable casual clothes”, while the attached entry for “warm-up” demonstrates that such clothing is in fact “casual wear”. (See attached entries from www.thefreedictionary.com and www.merriam-webster.com.)
To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage. See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b). Accordingly, the underlying webpages associated with the web addresses and/or links will not be considered.
In this case, the registration uses broad wording to describe the “jackets, pants, shirts, and sweatshirts”, which presumably encompasses all goods of the type described, including Applicant’s more narrow “streetwear shirts, t-shirts, sweatshirts, pants and jackets”. 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 goods 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)).
For example, attached U.S. Registration No. 5951945 identifies “sweaters and socks” as well as “shorts”, while U.S. Registration No. 5950356 specifies “sweaters, jumpers, skirts, dresses, socks” and “shorts”. Similarly attached web page screen captures from www.ralphlauren.com, www.calvinklein.us, http://qz.com, www.originoutside.com, www.heuritech.com, www.trendhunter.com, and http://grindtoshineclothing.com demonstrating that such goods are offered under the same mark and/or in the same channels of trade.
As to Applicant’s contention that it is unaware of actual confusion, “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).
As a result of the foregoing, the refusal under Trademark Act Section 2(d) [for likelihood of confusion with U.S. Registration No. 4506910] is maintained and made FINAL as to the identified International Class 025 goods.
Response Options – Partial Final Refusal
International Class 025.
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
In such case, the application will proceed for the following classes only:
International Classes 009, 016, 018, and 041.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
571-272-9284
nelson.snyder@uspto.gov (Informal comms only
RESPONSE GUIDANCE