To: | T & T Golf Ventures, LLC (ip@brownwinick.com) |
Subject: | U.S. Trademark Application Serial No. 88632522 - GL - 28506.0003 |
Sent: | January 07, 2020 05:44:24 AM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88632522
Mark: GL
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Correspondence Address:
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Applicant: T & T Golf Ventures, LLC
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Reference/Docket No. 28506.0003
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 07, 2020
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.
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is GL in a stylized form for “Golf club services; providing fitness and exercise facilities; providing facilities for recreational activities, namely, physical fitness classes” in International Class 41. Registrant’s mark is GL in an identical stylized form for “Golf club services; providing fitness and exercise facilities; providing facilities for recreational activities, namely, physical fitness classes” in International Class 41.
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/or 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/or 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 GL in a stylized form and registrant’s mark is GL in the same stylized form. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Services
In this case, the services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
Conclusion
As Applicant’s and Registrant’s marks and services are identical, registration of the applied-for mark must be refused under Trademark Act Section 2(d).
CONCURRENT USE REQUIREMENTS
Applicant may respond to this issue by either deleting this claim or satisfying at least one of the following entitlement criteria:
(1) Provide a decree from a court of competent jurisdiction that shows a final determination of the concurrent users’ rights. In addition, the following conditions must be met: (a) the decree specifies the rights of the parties; (b) the application complies fully and exactly with the court decree; (c) applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding; (d) if the decree involves a registration, it should be one that has already been restricted by the Director in accordance with the decree.
(2) Provide a decision by the Trademark Trial and Appeal Board (Board) in a prior concurrent use proceeding that shows a final determination of the concurrent users’ rights. In addition, the following conditions must be met: (a) the prior decision specifies applicant’s right to concurrent use registration; (b) the application complies with the Board’s prior decision; (c) applicant is entitled to registration subject only to the concurrent lawful use of a party to the prior concurrent use proceeding; (d) if the decision involves a registration, it should be one that has already been restricted by the Director in accordance with the Board’s prior decision.
(3) Provide a written consent signed by the owner of the conflicting registration that grants a concurrent use registration to applicant.
(4) Specify that applicant’s date of first use in commerce is prior to the filing date of (a) any pending applications or (b) any applications that have matured into registrations. If an excepted user has not filed an application or does not own a registration, then applicant’s date of first use in commerce must be prior to the filing date of any application that may be filed by the excepted user.
See 15 U.S.C. §1052(d); 37 C.F.R. §2.99(e)-(f); TBMP §1103.02; TMEP §1207.04 (c), (f)-(g).
If applicant satisfies one of the criteria above, applicant must also provide the following:
(1) This information about applicant’s use of the mark: (a) applicant’s goods and/or services; (b) the geographic area(s) in which applicant is using the mark in commerce; and (c) the mode of use for which applicant seeks registration.
(2) This information about the concurrent users: (a) their names and addresses; (b) their goods and/or services; (c) geographic area(s) in which they are using the mark in commerce; (d) the mode of such use; and (e) the time periods of such use; (f) any trademark registrations issued to and/or applications filed by them.
(3) A statement that no other person except as specified in the application has the right to use the mark in commerce.
(4) Verification in an affidavit or signed declaration under 37 C.F.R. §2.20 of all the items listed above, to the extent known by applicant.
37 C.F.R. §§2.33(f), 2.42(b); TMEP §1207.04(d)(i); see 15 U.S.C. §§1051(a)(3)(D), 1052(d).
MARK DESCRIPTION AMENDMENT REQUIREMENTS
The following description is suggested, if accurate: The mark consists of a partially shaded circle containing the stylized letters “GL”.
RESPONSE GUIDELINES
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.
Riso, Mark
/Mark Riso/
Trademark Examining Attorney
Law Office 108
(571)272-0167
Mark.Riso@uspto.gov
RESPONSE GUIDANCE