Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 19, 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

·         Advisory: Prior-Filed Application Potential Refusal

·         Amended Identification Of Goods Required – Partial Requirement

·         Multiple-Class Application Requirements

 

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 Nos. 4146821, 4522000, and 4514775.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

Applicant’s mark is MONARK and design (in stylized form) for,

 

“Jewelry; agates; alarm watches; articles of imitation jewelry; articles of jewelry; artificial gemstones; artificial jewelry; precious or semi-precious artificial stones; automatic watches; bands for watches; beads for making jewelry; bib necklaces; boxes for jewelry; boxes of precious metal; bracelets; bracelets; bracelets and watches combined; bracelets for watches; bracelets made of embroidered textile; braids of precious metals; cases for horological articles; cases for watches; cases adapted to contain items of jewelry; jewelry chains; chains of precious metals; charity wrist bands; charms for key chains; choker necklaces; clasps for jewelry; clip earrings; cloisonne jewelry; corporate recognition jewelry; costume jewelry; cuff links; cultured pearls; curios made of precious metal; custom jewelry; decorative articles of precious metals for personal use; decorative boxes made of precious metal; decorative objects of precious metals; diadems; diamonds; dress ornaments in the nature of jewelry; ear ornaments in the nature of jewelry; earrings; fitted jewelry pouches; gems; gemstones; gold; gold jewelry; hair ornaments of precious metal; hat jewelry; hat pins; imitation gold; imitation jet; imitation jewelry; imitation jewelry ornaments; imitation pearls; imitation precious stones; jade; key chains not of metal; key chains of common metal; key chains of precious metals; key fobs made of precious metal; key holders; lanyards; lapel badges; lockets; neck chains; necklaces; opal; ornamental articles of precious metal; osmium; palladium; pendants; trinket boxes; jewelry boxes; trinkets”; and

“Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; collars, leashes and clothing for animals; attache cases made of imitation leather; attache cases made of leather; bags; envelope bags, pouch bags of leather for packaging; bags made of imitation leather; casual bags; clutch bags; shoulder bags; money bags; boxes of leather or leatherboard; leather briefcases; briefcases made of leather; cases of imitation leather; cases of leather or leatherboard; credit card holders made of imitation leather; credit card holders made of leather; garment bags for travel made of leather; girths of leather; harness made from imitation leather; leather key cases; key cases of imitation leather; labels of leather; leather bags and wallets; leather cloth; leather laces; leather leashes; leather notecases; leather shoulder belts; leather shoulder straps; leather straps; leather twist; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; stirrup leathers; studs of leather; synthetic leather; tanned leather; bag covers; covers for parasols; luggage straps; luggage tags; make-up bags; wristlet bags; wallets; pouches; pouches for holding make-up, keys and other personal items; pouches of leather; purse frames; purses; purses, not of precious metal; purses made of precious metal” in Class 18; and

“Clothing, footwear; headwear; bandanas, neckerchiefs; bath wraps; beachwear; beanies; belts; berets; bermuda shorts; blazers; boots; bow ties; caps, headwear; cardigans; casualwear; clothing; corsets, underclothing; cover-ups; coveralls; cuffs; denim wear; hats; head scarves; head sweatbands; headbands; headwear; legwarmers; menswear; neck scarves; neckerchiefs; neckwear; panties; pantyhose; pants; pocket squares; printed t-shirts; sandals; scarfs; sleepwear; socks; stockings; suits; suspenders; t- shirts; ties; tights; under garments; underwear; veils; vest tops; vests; visors ; waist bands; walking shoes” in Class 25.

The registered marks are as follows:

1. The mark in Registration No. 4146821 is MONARK (in standard character form) for, in relevant part, “on-line retail store services featuring apparel, footwear, hats, wallets, bags, jewelry, sunglasses, and accessories” in Class 35.

 

2. The mark in Registration No. 4522000 is MONARCH (in standard character form) for “travel bags” in Class 18.

 

3. The mark in Registration No. 4514775 is MONARCH INSPIRATIONS (in standard character form) for “jewelry” in Class 14.

Introduction to Section 2(d) Analysis

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.

Similarity 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 the present case, applicant’s mark is confusingly similar in sound, appearance, meaning, and overall commercial impression to the registered marks.  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).  Specifically, the marks are highly similar in sound, appearance, and meaning because of the shared similar terms “MONARK / MONARCH”.

Moreover, the slight difference in appearance does not obviate the similarities between the marks.  The marks 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).

Next, the added term in the registered mark (Registration No. 4514775) does not affect the overall commercial impression because the wording is descriptive of the registrant’s goods.  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 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 “INSPIRATIONS” in the registered mark is commonly used in connection with similar goods to indicate craft designs.  See e.g., http://www.charmingbeadshop.com/DaVinci-Inspirations-Jewelry_c77.htm; http://www.ccforlife.com/Carved_Creations_Inspirations_Jewelry_s/1066.htm; http://gianiinspirations.com/jewelry/.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “MONARCH” the more dominant element of the mark.

Similarly, the design elements in applicant’s mark do not overcome the likelihood of confusion between the marks.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565.  The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case and consumers will focus on the wording in the marks.  Consequently, purchasers will understand the similar terms “MONARK / MONARCH” to be the dominant, source-identifying matter in the marks.  Ultimately, consumers will likely be confused as to the source of the parties’ goods and services because of the similarities between the marks.

For these reasons, the marks are confusingly similar.  

Relatedness of the Goods

Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

In this case, the registration (Registration No. 4514775) uses broad wording to describe “jewelry”, which presumably encompasses all goods of the type described, including applicant’s more narrow “jewelry; agates; alarm watches; articles of imitation jewelry; articles of jewelry; artificial gemstones; artificial jewelry; precious or semi-precious artificial stones; automatic watches; bands for watches; beads for making jewelry; bib necklaces; boxes for jewelry; boxes of precious metal; bracelets; bracelets; bracelets and watches combined; bracelets for watches; bracelets made of embroidered textile; braids of precious metals; cases for horological articles; cases for watches; cases adapted to contain items of jewelry; jewelry chains; chains of precious metals; charity wrist bands; charms for key chains; choker necklaces; clasps for jewelry; clip earrings; cloisonne jewelry; corporate recognition jewelry; costume jewelry; cuff links; cultured pearls; curios made of precious metal; custom jewelry; decorative articles of precious metals for personal use; decorative boxes made of precious metal; decorative objects of precious metals; diadems; diamonds; dress ornaments in the nature of jewelry; ear ornaments in the nature of jewelry; earrings; fitted jewelry pouches; gems; gemstones; gold; gold jewelry; hair ornaments of precious metal; hat jewelry; hat pins; imitation gold; imitation jet; imitation jewelry; imitation jewelry ornaments; imitation pearls; imitation precious stones; jade; key chains not of metal; key chains of common metal; key chains of precious metals; key fobs made of precious metal; key holders; lanyards; lapel badges; lockets; neck chains; necklaces; opal; ornamental articles of precious metal; osmium; palladium; pendants; trinket boxes; jewelry boxes; trinkets”.  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)).

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

Next, the compared goods and services 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).

The applicant’s “luggage and carrying bags; attache cases made of imitation leather; attache cases made of leather; bags; envelope bags, pouch bags of leather for packaging; bags made of imitation leather; casual bags; clutch bags; shoulder bags; money bags; boxes of leather or leatherboard; leather briefcases; briefcases made of leather; cases of imitation leather; cases of leather or leatherboard; credit card holders made of imitation leather; credit card holders made of leather; garment bags for travel made of leather; leather key cases; key cases of imitation leather; labels of leather; leather bags and wallets; leather notecases; leather shoulder belts; leather shoulder straps; leather straps; bag covers; luggage straps; luggage tags; make-up bags; wristlet bags; wallets; pouches; pouches for holding make-up, keys and other personal items; pouches of leather; purse frames; purses; purses, not of precious metal; purses made of precious metal” are closely related to the registrant’s (Registration No. 4522000) “travel bags” businesses frequently offer a variety of bags and accessories in the same channels of trade and under the same mark.  See e.g., http://us.longchamp.com/women/travel; http://www.shopstitchandrivet.com/shop; http://www.sterlingandburke.com/collections/for-travel-luggage-leather.

Moreover, the applicant’s “jewelry; agates; alarm watches; articles of imitation jewelry; articles of jewelry; artificial gemstones; artificial jewelry; precious or semi-precious artificial stones; automatic watches; bands for watches; beads for making jewelry; bib necklaces; boxes for jewelry; boxes of precious metal; bracelets; bracelets; bracelets and watches combined; bracelets for watches; bracelets made of embroidered textile; braids of precious metals; cases for horological articles; cases for watches; cases adapted to contain items of jewelry; jewelry chains; chains of precious metals; charity wrist bands; charms for key chains; choker necklaces; clasps for jewelry; clip earrings; cloisonne jewelry; corporate recognition jewelry; costume jewelry; cuff links; cultured pearls; curios made of precious metal; custom jewelry; decorative articles of precious metals for personal use; decorative boxes made of precious metal; decorative objects of precious metals; diadems; diamonds; dress ornaments in the nature of jewelry; ear ornaments in the nature of jewelry; earrings; fitted jewelry pouches; gems; gemstones; gold; gold jewelry; hair ornaments of precious metal; hat jewelry; hat pins; imitation gold; imitation jet; imitation jewelry; imitation jewelry ornaments; imitation pearls; imitation precious stones; jade; key chains not of metal; key chains of common metal; key chains of precious metals; key fobs made of precious metal; key holders; lanyards; lapel badges; lockets; neck chains; necklaces; opal; ornamental articles of precious metal; osmium; palladium; pendants; trinket boxes; jewelry boxes; trinkets”, “leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; collars, leashes and clothing for animals; attache cases made of imitation leather; attache cases made of leather; bags; envelope bags, pouch bags of leather for packaging; bags made of imitation leather; casual bags; clutch bags; shoulder bags; money bags; boxes of leather or leatherboard; leather briefcases; briefcases made of leather; cases of imitation leather; cases of leather or leatherboard; credit card holders made of imitation leather; credit card holders made of leather; garment bags for travel made of leather; girths of leather; harness made from imitation leather; leather key cases; key cases of imitation leather; labels of leather; leather bags and wallets; leather cloth; leather laces; leather leashes; leather notecases; leather shoulder belts; leather shoulder straps; leather straps; leather twist; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; stirrup leathers; studs of leather; synthetic leather; tanned leather; bag covers; covers for parasols; luggage straps; luggage tags; make-up bags; wristlet bags; wallets; pouches; pouches for holding make-up, keys and other personal items; pouches of leather; purse frames; purses; purses, not of precious metal; purses made of precious metal”, and “clothing, footwear; headwear; bandanas, neckerchiefs; bath wraps; beachwear; beanies; belts; berets; bermuda shorts; blazers; boots; bow ties; caps, headwear; cardigans; casualwear; clothing; corsets, underclothing; cover-ups; coveralls; cuffs; denim wear; hats; head scarves; head sweatbands; headbands; headwear; legwarmers; menswear; neck scarves; neckerchiefs; neckwear; panties; pantyhose; pants; pocket squares; printed t-shirts; sandals; scarfs; sleepwear; socks; stockings; suits; suspenders; t- shirts; ties; tights; under garments; underwear; veils; vest tops; vests; visors ; waist bands; walking shoes” are closely related to the registrant’s (Registration No. 4146821) “on-line retail store services featuring apparel, footwear, hats, wallets, bags, jewelry, sunglasses, and accessories” businesses registrant’s broad identification broadly encompasses applicant’s goods and businesses frequently offer products and retail services in the same channels of trade and under the same mark.  See e.g., http://oldnavy.gap.com/; http://www2.hm.com/en_us/index.html; http://www.jcrew.com/.

The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).  Therefore, the goods and services are related.

The attached evidence establishes that goods and services similar to the parties’ respective goods and services frequently travel in the same channels of trade, and are offered to the same class of consumers in the same field of use.  As a result, consumers encountering applicant’s and registrants’ respective goods and services at the same time are likely to mistakenly presume the goods and services originate from the same source because of the relationship between the goods and services.  Consequently, applicant’s and registrants’ respective goods and services are closely related under the likelihood of confusion analysis.

Therefore, because the marks are confusingly similar and the goods and services are closely related, the application is refused for a likelihood of confusion under 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.

Applicant should note the following potential refusal.

 

ADVISORY: PRIOR-FILED APPLICATION POTENTIAL REFUSAL

 

The filing date of pending U.S. Application Serial No. 87626775 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.

 

If applicant responds to the refusal and/or potential refusal, applicant must also respond to the requirement set forth below.

 

AMENDED IDENTIFICATION OF GOODS REQUIRED – PARTIAL REQUIREMENT

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Preliminary Matters

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 14 for “bracelets” and International Class 25 for “headwear; neckerchiefs”.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Class 14

 

First, applicant has included the term “or” in the identification of goods.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant intends to use the mark on all the identified goods.

 

An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language. 

 

Next, the wording “artificial jewelry; bracelets and watches combined; cases for watches; chains of precious metals; charity wrist bands; curios made of precious metal; decorative articles of precious metals for personal use; decorative objects of precious metals; diadems; hair ornaments of precious metal; hat pins; imitation gold; imitation jet; key fobs made of precious metal; key holders; lapel badges; ornamental articles of precious metal; trinket boxes; trinkets” in the identification of goods is indefinite and must be clarified to further specify the nature or type of goods, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, the wording “lanyards” in the identification of goods for International Class 14 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “eyeglass lanyards” in Class 9 or “lanyards for holding badges and keys” in Class 22.

 

Class 18

 

The wording “luggage and carrying bags; bags; casual bags; money bags; harness made from imitation leather; leather cloth; leather laces; leather twist; stirrup leathers; studs of leather; bag covers; make-up bags; pouches” in the identification of goods is indefinite and must be clarified to further specify the nature, use, type, or purpose of the goods, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 25

 

First, the word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses). 

 

Next, the wording “bath wraps; casualwear; corsets; denim wear; menswear” in the identification of goods is indefinite and must be clarified to further specify the nature and type of goods, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, with changes highlighted in bold, if accurate: 

 

Class 9 [new class] – “Eyeglass lanyards”; and

 

Class 14 – “Jewelry; agates; alarm watches; articles of imitation jewelry; articles of jewelry; artificial gemstones; artificial jewelry being imitation jewelry; precious and semi-precious artificial stones; automatic watches; bands for watches; beads for making jewelry; bib necklaces; boxes for jewelry; boxes of precious metal; bracelets; bracelets and watches combined in the nature of {indicate type, e.g., watches with attached bracelet watches}; bracelets for watches; bracelets made of embroidered textile; braids of precious metals; cases for horological articles; cases adapted for holding watches; cases adapted to contain items of jewelry; jewelry chains; {indicate type, e.g., jewelry; key} chains of precious metals; charity wrist bands being jewelry in the nature of bracelets; charms for key chains; choker necklaces; clasps for jewelry; clip earrings; cloisonne jewelry; corporate recognition jewelry; costume jewelry; cuff links; cultured pearls; curios made of precious metal, namely, {indicate Class 14 type, e.g., jewelry}; custom jewelry; decorative articles of precious metals for personal use, namely, {indicate Class 14 type, e.g., crosses}; decorative boxes made of precious metal; decorative objects of precious metals, namely, {indicate Class 14 type, e.g., crosses}; jewelry, namely, diadems; diamonds; dress ornaments in the nature of jewelry; ear ornaments in the nature of jewelry; earrings; fitted jewelry pouches; gems; gemstones; gold; gold jewelry; hair ornaments of precious metal being hair jewelry in the nature of jewelry for use in the hair; hat jewelry; jewelry hat pins; imitation gold being jewelry; imitation jet being jewelry; imitation jewelry; imitation jewelry ornaments; imitation pearls; imitation precious stones; jade; key chains not of metal; key chains of common metal; key chains of precious metals; decorative key fobs made of precious metal; key holders of precious metal; lapel badges of precious metal; lockets; neck chains; necklaces; opal; ornamental articles of precious metal, namely, {indicate Class 14 type, e.g., holiday ornaments}; osmium; palladium; pendants; trinket boxes being jewelry boxes; jewelry boxes; trinkets being jewelry”; and

 

Class 18 – “Leather and imitations of leather; animal skins and hides; luggage and all-purpose carrying bags; umbrellas and parasols; walking sticks; collars, leashes and clothing for animals; attache cases made of imitation leather; attache cases made of leather; bags, namely, {indicate Class 18 type, e.g., weekend bags, gym bags}; envelope bags, pouch bags of leather for packaging; bags made of imitation leather; casual bags, namely, {indicate Class 18 type, e.g., weekend bags; gym bags}; clutch bags; shoulder bags; money bags being coin purses; boxes of leather or leatherboard; leather briefcases; briefcases made of leather; cases of imitation leather; cases of leather or leatherboard; credit card holders made of imitation leather; credit card holders made of leather; garment bags for travel made of leather; girths of leather; harness made from imitation leather for {indicate Class 18 purpose, e.g., animals, guiding children}; leather key cases; key cases of imitation leather; labels of leather; leather bags and wallets; leather cloth being imitation leather; leather laces being leather cord; leather leashes; leather notecases; leather shoulder belts; leather shoulder straps; leather straps; leather twist being leather cord; sheets of imitation leather for use in manufacture; sheets of leather for use in manufacture; stirrups of leather; studs of leather being {indicate Class 18 type, e.g., trimmings for furniture}; synthetic leather; tanned leather; fitted protective bag covers, namely, {indicate Class 18 type, e.g., backpacks}; covers for parasols; luggage straps; luggage tags; make-up bags sold empty; wristlet bags; wallets; pouches of {indicate Class 18 material, e.g., leather, textile}; pouches for holding make-up, keys and other personal items; pouches of leather; purse frames; purses; purses, not of precious metal; purses made of precious metal”; and

 

Class 22 [new class] – “Lanyards for holding {indicate Class 22 type, e.g., badges and keys}”; and

 

Class 25 – “Clothing, namely, {indicate Class 25 type, e.g., shirts, pants}, footwear; headwear; bandanas, neckerchiefs; bath wraps being bathrobes; beachwear; beanies; belts; berets; bermuda shorts; blazers; boots; bow ties; caps, headwear; cardigans; casualwear, namely, {indicate
Class 25 type, e.g., shirts, pants}; clothing, namely, {indicate Class 25 type, e.g., shirts, pants}; corsets being clothing, underclothing; cover-ups; coveralls; cuffs; denim wear, namely, {indicate Class 25 type, e.g., pants, jackets}; hats; head scarves; head sweatbands; headbands; legwarmers; menswear, namely, {indicate Class 25 type, e.g., shirts, pants}; neck scarves; neckwear; panties; pantyhose; pants; pocket squares; printed t-shirts; sandals; scarfs; sleepwear; socks; stockings; suits; suspenders; t-shirts; ties; tights; under garments; underwear; veils; vest tops; vests; visors; waist bands; walking shoes”

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

Applicant should note the following additional requirement.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods 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 5 classes; however, applicant submitted fee(s) sufficient for only 3 classes.  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.

 

Filing Fees For Added Classes

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.

 

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

evonne.neptune@uspto.gov

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 19, 2019 for

U.S. Trademark Application Serial No. 88621582

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

evonne.neptune@uspto.

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 19, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”