To: | Johnson, Amber (iambercode@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88620393 - PHINISHED - N/A |
Sent: | December 23, 2019 12:28:18 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88620393
Mark: PHINISHED
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Correspondence Address:
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Applicant: Johnson, Amber
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Reference/Docket No. N/A
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 23, 2019
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.
Statutory Refusal
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. 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.
There is a likelihood of confusion because applicant’s mark, PHINISHED, and registrant’s mark, FINISHED MMA WEAR and design, are very similar: and the applicant’s goods, namely, “Hats; A-shirts; Anklets; Aprons; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic pants; Athletic shirts; Athletic shorts; Athletic skirts; Baby bottoms; Baby tops; Balloon pants; Baseball caps; Baseball uniforms; Baselayer bottoms; Bathing suits; Bed jackets; Bikinis; Blouses; Board shorts; Body shirts; Bomber jackets; Bonnets; Bow ties; Boxer briefs; Briefs; Bustiers; Camouflage jackets; Camouflage pants; Camouflage shirts; Cap visors; Capes; Cardigans; Cargo pants; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Clothing, namely, arm warmers; Clothing, namely, hand-warmers; Clothing, namely, knee warmers; Clothing, namely, neck tubes; Collars; Combinations; Crew necks; Crop pants; Cross-country gloves; Cross-country mittens; Dance costumes; Denims; Dresses; Ear muffs; Ear warmers; Fishing shirts; Flip flops; Footies; Footwear; Gloves as clothing; Gloves including those made of skin, hide or fur; Golf caps; Golf shirts; Head sweatbands; Headwear; Heavy coats; Hooded pullovers; Hoods; Hunting jackets; Infant wear; Infantwear; Insoles; Jackets; Jeans; Jerseys; Jumper dresses; Jumpers; Knit shirts; Leg-warmers; Light-reflecting coats; Light-reflecting jackets; Lingerie; Long jackets; Long sleeve pullovers; Long underwear; Long-sleeved shirts; Lounge pants; Maternity lingerie; Maternity sleepwear; Men's dress socks; Men's socks; Muffs; Neckties; Night shirts; Open-necked shirts; Over-trousers; Overcoats; Padding jackets; Pajama bottoms; Pajamas; Panties; Pants; Parkas; Petti-pants; Polo shirts; Rainwear; Reversible jackets; Robes; Sandals; Shirt-jacs; Shirts; Shoe soles; Short-sleeved shirts; Slacks; Sleep masks; Sleep shirts; Sleepwear; Sneakers; Snow suits; Soccer bibs; Socks; Sport shirts; Sports bra; Sports overuniforms; Sports pants; Sports shirts; Stockings; Stretch pants; Sweat jackets; Sweat pants; Sweat shirts; Sweat suits; Sweaters; Swimsuits; Swimwear; T-shirts; Tank tops; Tap shoes; Tee shirts; Tights; Topcoats; Track jackets; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Turtle neck shirts; Underclothes; Undergarments; Underpants; Underwear; Vests; Volleyball jerseys; Walking shorts; Warm up outfits; Warm up suits; Wind pants; Wind shirts; Women's clothing, namely, shirts, dresses, skirts, blouses; Yoga pants; Yoga shirts”, are identical and move in the same trade channels as registrant’s goods, namely, “Athletic footwear; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts; Clothing for wear in judo practices; Clothing for wear in wrestling games; Gloves as clothing; Headgear, namely, hats,”, leading consumers to believe that applicant and registrant are related.
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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). FINISHED is the salient element of registrant’s mark which is the phonetic equivalent of applicant’s mark. The relevant wording 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).
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.
Further action awaits response to the above.
How to respond. Click to file a response to this nonfinal Office action.
/Raul Cordova/
Examining Attorney
Law Office 114
571-272-9448
Raul.Cordova@uspto.gov
RESPONSE GUIDANCE
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 an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.