To: | GILLZ, LLC (frijouf@frijouf.com) |
Subject: | U.S. Trademark Application Serial No. 88603854 - FINTECH - GILLZ.19002 |
Sent: | December 06, 2019 04:50:51 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88603854
Mark: FINTECH
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Correspondence Address:
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Applicant: GILLZ, LLC
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Reference/Docket No. GILLZ.19002
Correspondence Email Address: |
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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 06, 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.
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. 1354245. 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 FINTECH (in standard characters) for “Clothing, namely, shirts, T-shirts, long sleeve shirts, sun masks, shirts with attached sun mask, hats, caps, headwear, pullovers, sweatshirts, hooded sweatshirts, moisture wicking shirts, underwear, shorts, and visors” in International Class 25.
Registrant’s mark is FINTEX (in typed drawing) for “neckties, belts, scarves, sweaters, blouses and dresses” in International Class 25.
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 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.
Similarity of the Marks
Applicant’s mark is FINTECH (in standard characters).
Registrant’s mark is FINTEX (in typed drawing).
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 the present case, applicant’s mark and registrant’s mark create similar commercial impressions because each of the marks feature the nearly identical term “FINTECH” / “FINTEX”. Though applicant’s mark uses a variant in spelling of the term, applicant’s “FINTECH” and registrant’s “FINTEX” are essentially phonetic equivalents and thus sound similar. 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). As such, consumers retaining only a general rather than a specific impression of trademarks are likely to believe that the applicant’s and registrant’s marks identify the same source as applied to the respective goods.
Accordingly, the applied-for mark is considered confusingly similar to the registered mark for the likelihood of confusion analysis.
Relatedness of the Goods
Applicant’s goods are for “Clothing, namely, shirts, T-shirts, long sleeve shirts, sun masks, shirts with attached sun mask, hats, caps, headwear, pullovers, sweatshirts, hooded sweatshirts, moisture wicking shirts, underwear, shorts, and visors” in International Class 25.
Registrant’s goods are for “neckties, belts, scarves, sweaters, blouses and dresses” in International Class 25.
The compared goods 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).
Indeed, the attached Internet evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See attached Internet evidence from Coolibar, LL Bean, and J.Crew showing the same parties offering shirts, sun masks, shirts with attached sun masks, headwear, pullovers, sweatshirts, moisture wicking shirts, underwear, neckties, belts, scarves, sweaters, blouses and dresses. Therefore, applicant’s and registrant’s goods 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).
Conclusion
The marks are similar in overall commercial impression, and the goods are highly related. It is likely that a consumer would mistakenly believe applicant’s goods are offered by registrant or vice versa. For these reasons, registration is refused pursuant to 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.
The wording “sun masks, shirts with attached sun mask” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., sun protective clothing in the nature of sun masks, sun protective clothing in the nature of shirts with attached sun mask. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In addition, the wording “caps” and “visors” in the identification of goods is indefinite and must be clarified to specify the intended nature or purpose of the goods, e.g., “caps being headwear” and “visors being headwear”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (changes shown in bold):
International Class 25:
Clothing, namely, shirts, t-shirts, long sleeve shirts, sun protective clothing in the nature of sun masks, sun protective clothing in the nature of shirts with attached sun mask, hats, caps being headwear, headwear, pullovers, sweatshirts, hooded sweatshirts, moisture wicking shirts, underwear, shorts, and visors being headwear
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.
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.
/Melissa Sturman/
Melissa Sturman
Trademark Examining Attorney
Law Office 125
(571) 272-2781
melissa.sturman@uspto.gov
RESPONSE GUIDANCE