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. 88615964
Mark: NEXT
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Correspondence Address:
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Applicant: NEXT
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 19, 2019
This correspondence details the following bases for refusing advancement of this application:
1. There are three registered marks that bar registration of the subject mark of this application; and
2. Applicant must provide additional information as to the national citizenship of the sole proprietor.
Applicant filed this application on September 13, 2019, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2012), based on its allegation of a bona fide intention to use the mark “NEXT,” to identify the source of various goods in International Class 25.
Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject marks of U.S. Registration No. 2912202, issued on December 21, 2004, with its first renewal accepted on January 1, 2015, U.S. Registration No. 5340922, issued on November 21, 2017, and U.S. Registration No. 4775540, issued on July 21, 2015 (copies are attached hereto). Id. § 1052(d); see TMEP § 1207.01. The first two registrations are held by one owner.
Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services. 15 U.S.C. § 1052(d); see TMEP § 1207.01. In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark. 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor. In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010). In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely. See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.
As the first two cited registrations and the last cited registration are owned by different registrants, and the refusals pertain to different points of analysis, the determinations for reaching this refusal are addressed separately by registrant.
In this comparison, all marks are legally identical, comprised of the single term “NEXT,” depicted in standard character form or the typeset lettering equivalent. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008). Therefore, in actual use, both marks may be displayed in a same manner of font, style, color and size. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).
Consequently, because the marks are identical, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002).
The greater the degree of similarity between the marks, the lesser the degree of similarity between the goods or services is necessary to support a finding of likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). When the marks are identical, as they are here, it is only necessary that there be a viable relationship between the goods to support a finding of likelihood of confusion. In re Iolo Techs. LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).
The decisions in the clothing field have held many different types of apparel to be related under Section 2(d). See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 162, 23 U.S.P.Q.2d 1945 (Fed. Cir. 1992) (“KANGOL” with design, for golf shirts, and “KANGAROOS” with design, for athletic shoes, sweat suits and athletic shirts); Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 U.S.P.Q. 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots compared with men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 U.S.P.Q.2d 1233 (TTAB 1992) (“ELANCE” for underwear compared with “ELAAN” for neckties); In re Melville Corp. 18 U.S.P.Q.2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets compared with women’s shoes); In re Pix of America, Inc., 225 U.S.P.Q. 691 (TTAB 1985) (“NEWPORTS” for women’s shoes compared with “NEWPORT” for outer shirts); Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 203 U.S.P.Q. 947, 950 (TTAB 1979) (“VITTORIO RICCI” for sweaters, belts, neckties, shoes and blouses, and “NINA RICCI” for hosiery, lingerie, hats, scarves and ties); U.S. Shoes Corp. v. Oxford Indus., Inc., 165 U.S.P.Q. 86 (TTAB 1970) (“COBBIES BY COS COB” for women’s and girl’s shirt-shifts and “COBBIES” for shoes).
Here, the comparison is between the following:
Listed goods in this application:
Shirts; Shoes; Shorts; Bottoms as clothing for men, women, youth; Coats for men, women, youth; Hooded sweatshirts for men, women, youth; Jackets for men, women, youth; Pants for men, women, youth; Sweaters for men, women, youth; Sweatpants for men, women, youth; Sweatshirts for men, women, youth; Tops as clothing for men, women, youth.
Listed goods in U.S. Registration No. 2912202:
Clothing, namely, t-shirts, fleece shirts, denim shirts, jackets, pants and hats.
Listed goods in U.S. Registration No. 5340922:
Clothing, namely, various types of clothing for men, women and children and not professional uniforms, namely, t-shirts, pants, dresses, skirts, tops, shirts, shorts, jeans, knitwear in the nature of jumpers, sweaters, cardigans, dresses, hats, and scarves; footwear in the nature of trainers, boots, tights, joggers, hoodies, shorts, t-shirts, jackets, leggings, polo shirts, jumpers, sweat tops, track suits, hats, vests, bras, socks, leotards, swimsuits, trunks; coats, jackets, waistcoats, tights, underwear, lingerie, sleepwear, bras, socks, suits, bridesmaid dresses, ties, bow ties, beachwear, scarves, gloves, ponchos; footwear, headwear, headbands; accessories for clothing and fashion, namely, belts.
Where the listed goods in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type, and that the identified goods are offered in all normal channels of trade, and to all potential purchasers. In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii).
Here, the identified goods in the cited registrations encompass the identified goods in this application. In this regard, these goods are legally identical.
Where the goods are legally identical, it must be presumed that the channels of trade and classes of purchasers are the same. In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”); see TMEP § 1207.01(a)(iii).
Moreover, under the second DuPont factor, it is not necessary to prove similarity as to each and every product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 U.S.P.Q. 986, 988 (CCPA 1981); In re Aquamar, Inc., 115 U.S.P.Q.2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.”); In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734, 1745 (TTAB 2014).
In view of the foregoing analysis, the respective goods are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.
Based on a determination that the marks are similar and the goods are related, the evidentiary showing and the presumption that the goods move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered marks.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety. Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014).
Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, “but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.” In re Davia, 110 U.S.P.Q.2d 1810, 1813 (TTAB 2014). Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks. See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b).
Additionally, the appearance of registrations of marks in standard character or typeset lettering “may be changed at any time at the whim of its owner; rights in such a mark reside in the term itself rather than in any particular form thereof.” In re Melville Corp., 18 U.S.P.Q.2d 1386, 1388 (TTAB 1991); see In re RSI Systems, LLC, 88 U.S.P.Q.2d 1445 (TTAB 2008). Therefore, in comparisons between standard character marks and special form marks comprised depicted entirely of stylized lettering, “stylized lettering does not provide a significant difference between the marks.” In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003).
Here, the marks resemble each other. Both marks consist of the sole literal element “NEXT,” a term that is inherently distinctive in relation to the respective goods and services.
As to appearance, Applicant’s applied-for mark is presented in standard character form, while the cited registered mark is a special form mark consisting of stylized lettering. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008). Therefore, in actual use, Applicant’s proposed mark may be displayed in a same manner of placement, font, style, color and size as the cited registered mark. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).
Thus, for comparison purposes, the stylization in the cited registered mark is not sufficient to avoid a determination of a likelihood of confusion.
In sum, Applicant’s mark sufficiently resembles the cited registered mark that, if used in connection with related goods and services, confusion would be likely to occur.
Viewed in their entireties with the differences evaluated, the marks are sufficiently similar in appearance, sound and connotation, and would create highly similar commercial impressions on the minds of purchasers. Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002). Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018). “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002).
“[C]onfusion is likely where one party engages in retail services that sell goods of the type produced by the other party.” In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 2018); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 U.S.P.Q.2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services confusingly similar to BIGGS for furniture); In re Peebles Inc., 23 U.S.P.Q.2d 1795 (TTAB 1992) (holding MOUNTAINHIGH for clothing confusingly similar to MOUNTAIN HIGH for retail camping services); In re Phillips-Van Heusen Corp., 228 U.S.P.Q. 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB, in stylized lettering, for restaurant services and towels); In re U.S. Shoe Corp., 229 U.S.P.Q. 707 (TTAB 1985) (holding CAREER IMAGE, in stylized lettering, for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES, also in stylized lettering, for uniforms).
Here, the comparison is between the following:
Listed goods in this application:
Shirts; Shoes; Shorts; Bottoms as clothing for men, women, youth; Coats for men, women, youth; Hooded sweatshirts for men, women, youth; Jackets for men, women, youth; Pants for men, women, youth; Sweaters for men, women, youth; Sweatpants for men, women, youth; Sweatshirts for men, women, youth; Tops as clothing for men, women, youth.
Listed services in Reg. No. 4775540:
On-line retail store services featuring apparel, footwear, and apparel and footwear accessories; Retail store services featuring apparel, footwear, and apparel and footwear accessories.
In comparing the goods in this application with the listed retail store and online retail store services featuring apparel, footwear, and apparel and footwear accessories, the attached evidence, comprised of digital images from retail clothing websites, supports a determination that clothing and retail clothing store services featuring such goods appear under at least one common source identifier by third parties, and are complementary products and services. See attached evidence.
Furthermore, because there are no limitations in the cited registration and the subject application, it is presumed that the respective goods and services travel in all normal channels of trade and are offered to all potential relevant consumers. In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017).
In view of the foregoing analysis, the respective goods and services are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods and services, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.
Based on a determination that the marks are similar and the goods and services are related, and the evidentiary showing and presumption that the goods and services move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant is identified in the application as a sole proprietorship named “NEXT”, organized in Nevada. The record further states that Robbert McDonald is the individual person who is the sole proprietor. However, Applicant must also specify the national citizenship of the individual person who is the sole proprietor. TMEP § 803.03(a).
The following format for identifying a sole proprietorship should be used: “NEXT, a Nevada sole proprietorship, composed of Robbert McDonald, a U.S. citizen.” TMEP § 803.03(a).
If, rather than a sole proprietorship, Applicant is instead an individual person doing business under an assumed business name, then the following format should be used: “Robbert McDonald, a U.S. citizen, doing business as NEXT.” TMEP §§ 803.02(a), 803.04.
Because of the legal technicalities and strict deadlines of the trademark application process, Applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about the legal rights of an applicant. TMEP §§ 705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
Applicant must respond timely and completely to the issues raised in this Office Action. 15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03. Otherwise, this application will be abandoned. 37 C.F.R. § 2.65(a).
How to respond: Click to file a response to this non-final Office action. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§ 2.62(c), 2.191; TMEP §§ 304.01-.02, 709.04-.05.
Please contact the undersigned attorney with any additional questions.
Sincerely,
/Judy Helfman/
Judith M. Helfman
Attorney, Law Office 111
571/272-5892
judy.helfman@uspto.gov
RESPONSE GUIDANCE
