| To: | 5.11 Inc. (ipdocket@grsm.com) |
| Subject: | U.S. Trademark Application Serial No. 88610116 - ECHO FOAM - TACTPEND |
| Sent: | December 28, 2019 04:46:01 PM |
| Sent As: | ecom123@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 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
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. 88610116
Mark: ECHO FOAM
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Correspondence Address:
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Applicant: 5.11 Inc.
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Reference/Docket No. TACTPEND
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 28, 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:
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
· PRIOR FILED PENDING APPLICATION
· IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
· DISCLAIMER REQUIRED
· REQUEST FOR INFORMATION
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. 4855258, 1184921, and 0524118. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
The applied-for mark is “ECHO FOAM” for “Clothing, namely, pants, shorts, vests, shirts, t-shirts, polo shirts, fleece pullovers, coats, jackets, blazers, parkas, wind resistant jackets, coveralls, dungarees, jump suits, uniforms, waterproof jackets, waterproof pants, underwear; head wear, hats, caps; gloves, belts, socks, footwear, boots, shoe laces; personal safety and protective clothing, namely, duty belts, load bearing equipment belts, load bearing equipment vests and accessory carrying vests for public safety personnel and military use” in international class 25.
U.S. Registration No. 4855258 is for the mark “ECHO” and is used in connection with “scarfs, capes, boleros; waist wraps, namely, sashes and obis; ties for women; mufflers, wraps, ascots, ponchos, serapes, ruanas, jackets and vests” in International Class 25.
U.S. Registration No. 1184921 is for the mark “ECHO” and is used in connection with “scarfs” in international class 25.
U.S. Registration No. 0524118 is for the mark “ECHO” and is used in connection with “WOMEN'S SHAWLS AND SCARFS” in international class 25.
All three marks are owned by Echo Design Group.
Comparison of the 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 case, applicant's mark, “ECHO FOAM”, is confusingly similar to registrant’s mark,”ECHO”, because the marks are highly similar in sound, appearance, connotation, and commercial impression. Specifically, the marks share the wording “ECHO”, and this term would be pronounced and displayed identically, thereby creating similarities in sound and appearance.
The applied for mark also contains the additional wording “FOAM”. This additional wording does not obviate the similarity between the marks because although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording “FOAM” in the applied-for mark is merely descriptive of applicant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “ECHO” the more dominant element of the mark.
Ultimately, applicant’s mark is likely to cause confusion with the registrant’s mark(s) because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers. Thus the marks are confusingly similar.
Comparison of the Goods and Services
In this case, both applicant and registrant use the marks on closely related goods.
The attached Internet evidence, consisting of providers of scarves and other articles of clothing, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Thus, 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).
J. Crew
Express
Accordingly, the goods of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Therefore, upon encountering “ECHO” and “ECHO FOAM” used on the identified goods and services, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source. Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4855258, 1184921, and 0524118. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
If applicant responds to the refusal, applicant must also respond to the requirement set forth below
PRIOR FILED PENDING APPLICATION
The effective filing date of pending U.S. Application Serial No. 88515353 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. 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 application.
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 mark in the referenced application. 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.
IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
Applicant may substitute the following wording, if accurate:
Class 9
Personal safety and protective clothing, namely, protective load bearing equipment vests reinforced with ballistic armor for holding tactical equipment
Class 13
Personal safety and protective clothing, namely, duty belts in the nature of {Specify goods of these types in class 13 e.g., belts adapted for ammunition}, load bearing equipment belts adapted primarily for holding guns, grenades and ammunition, load bearing equipment vests adapted primarily for holding guns, grenades and ammunition and accessory carrying vests adapted primarily for holding guns, grenades and ammunition
for public safety personnel and military use
Class 25
Clothing, namely, pants, shorts, vests, shirts, t-shirts, polo shirts, fleece pullovers, coats, jackets, blazers, parkas, wind resistant jackets, coveralls, dungarees, jump suits, uniforms, waterproof jackets, waterproof pants, underwear; head wear, hats, caps being headwear; gloves, belts, socks, footwear, boots
Class 26
Shoe Laces
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.
CLARIFICATION REQUIRED – NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
Multiple 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.
(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 that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class. 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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “FOAM” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached dictionary definition shows that the wording “FOAM” means “Any of various light, porous, semirigid or spongy materials, usually the solidified form of a liquid full of gas bubbles, used as a building material or for thermal insulation or shock absorption, as in packaging.” This wording is descriptive of articles of clothing and footwear that contain “FOAM”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FOAM” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
REQUEST FOR INFORMATION
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
· What is the significance of “ECHO” in relation to the applicant’s goods?
· Explain whether the wording “ECHO FOAM” or “ECHO” in the mark has any meaning or significance in the trade or industry in which applicant’s goods are manufactured or provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
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.
ASSISTANCE
/Odette Martins/
Trademark Examining Attorney
Law Office 123
(571) 270-0122
odette.martins@uspto.gov
RESPONSE GUIDANCE
