To: | Saliev Albert (info3@myattorneyusa.com) |
Subject: | U.S. Trademark Application Serial No. 88630732 - ENIGMA - N/A |
Sent: | January 08, 2020 07:27:54 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88630732
Mark: ENIGMA
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Correspondence Address:
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Applicant: Saliev Albert
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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: January 08, 2020
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.
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. 1389178. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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).
Applicant seeks to register the mark ENIGMA stylized and design for use with “Clothing for athletic use, namely, padded shirts; Clothing, namely, crops; Clothing, namely, thobes; Dresses; Hats; Lab coats; Pants; Scrub tops and pants not for surgical purposes; Shoes; Skirt suits; Skirts; Skirts and dresses; Socks; Uniforms; Warm-up suits; Warm up outfits; Warm up suits; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Body suits for babies, adults, children, women, men; Bottoms as clothing; Coats for babies, adults, children, women, men; Combinations; Gloves as clothing; Head wraps; Hooded sweatshirts for babies, adults, children, women, men; Hoodies; Jackets; Jackets for babies, adults, children, women, men; Non-disposable cloth training pants; Pajamas for babies, adults, children, women, men; Pants for babies, adults, children, women, men; Shifts as clothing; Shoes for babies, adults, children, women, men; Short sets; Shorts for babies, adults, children, women, men; Shoulder wraps for clothing; Sports over uniforms; Sweaters for babies, adults, children, women, men; T-shirts for babies, adults, children, women, men; Ties as clothing; Tops as clothing; Trousers for babies, adults, children, women, men; Trunks being clothing; Women's clothing, namely, shirts, dresses, skirts, blouses; Woven shirts for babies, adults, children, women, men”.
The Registrant owns the mark ENIGMA for “shoes.”
In the first step of the analysis, the examining attorney finds that the term ENIGMA in the applicant’s mark is identical to the registrant’s mark ENIGMA.
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/or 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, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Consumers will call for the applicant’s goods by the literal term ENIGMA not by the design. Because consumers will call for the applicant’s goods and the registrant’s goods by the same name, ENIGMA, the examining attorney finds that the marks are overall confusingly similar and impart a similar commercial impression.
In the second step of the analysis, the examining attorney finds that the applicant’s goods and the registrant’s goods are the same. Both the applicant and the registrant provide shoes. Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Because consumers will call for the applicant’s goods and the registrant’s goods by the same name and the goods are the same, the examining attorney refuses registration of the mark under Section 2(d) of the Trademark Act. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Applicant May Respond
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Goods
Applicant may adopt the following identification, if accurate:
Clothing for athletic use, namely, padded shirts; Clothing, namely, crops; Clothing, namely, thobes; Dresses; Hats; Lab coats; Pants; Scrub tops and pants not for surgical purposes; Shoes; Skirt suits; Skirts; Skirts and dresses; Socks; Uniforms; Warm-up suits; Warm up outfits; Warm up suits; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Body suits for babies, adults, children, women and men; Bottoms as clothing; Coats for babies, adults, children, women and men; Combinations; Gloves as clothing; Head wraps; Hooded sweatshirts for babies, adults, children, women and men; Hoodies; Jackets; Jackets for babies, adults, children, women and men; Non-disposable cloth training pants; Pajamas for babies, adults, children, women and men; Pants for babies, adults, children, women and men; Shifts as clothing; Shoes for babies, adults, children, women and men; Short sets; Shorts for babies, adults, children, women and men; Shoulder wraps for clothing; Sports over uniforms; Sweaters for babies, adults, children, women and men; T-shirts for babies, adults, children, women and men; Ties as clothing; Tops as clothing; Trousers for babies, adults, children, women and men; Trunks being clothing; Women's clothing, namely, shirts, dresses, skirts, blouses; Woven shirts for babies, adults, children, women and men. International Class 25.
Color Claim and Description
The following color claim is suggested, if accurate: “The colors red and white are claimed as a feature of the mark.” TMEP §807.07(a)(i).
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate: “The mark consists of the stylized red wording ENIGMA below a design of a white circle outlined in red featuring a white cross outlined in red layered on the circle with a red heart centered on the cross.”
Mark Does not Reproduce Satisfactorily
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/D. Beryl Gardner/
Trademark Examining Attorney
Law Office 117
571-272-9162 (O)
571-273-9162 (F)
beryl.gardner@uspto.gov
RESPONSE GUIDANCE