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. 88636756
Mark: EMP
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Correspondence Address:
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Applicant: Walls-Pickett, Arnita
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicants’ 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 03, 2020
The referenced application and applicants’ October 10, 2019 and November 2, 2019 voluntary amendments have been reviewed by the assigned trademark examining attorney. Applicants must respond timely and completely to the issues 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 with Registered Marks
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)); TMEP §1207.01.
Similarity of the Marks
The applied-for mark is EMP. The registered marks are also EMP.
In the present case, applicants’ and registrants’ 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 applicants’ and registrants’ respective goods. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
Applicant seeks to register its mark for clothing, including tops and bottoms for running and yoga, crop tops, headbands, jackets, jerseys, shirts, t-shirts, and tank tops, and bags in the nature of duffle bags, handbags, and tote bags. The registered marks are also for clothing, including sportswear, headwear, and t-shirts (U.S. Registration No. 2490993) and crop tops, headbands, jackets, tops, and tank tops (U.S. Registration No. 5235075).
In this case, the goods in the application and registrations are identical to the extent that they include crop tops, headbands, jackets, t-shirts, and tank tops. In addition, the broad wording sportswear, headwear, and tops in the identifications in the registrations is presumed to encompass all goods of the type described, including the running and yoga tops and bottoms, jerseys, and shirts identified in the application. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018). Thus, these goods of the applicants and registrants 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).
Additionally, the goods of the applicants have no restrictions as to channels of trade or classes of purchasers and are thus “presumed to travel in the same channels of trade to the same class of purchasers” as registrants’ goods. 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)).
The attached Internet evidence from www.jcrew.com, www.loft.com, and www.landsend.com, consisting of excerpts from websites of entities that produce clothing like registrants’ and bags like applicants’, establishes that the same entity commonly produces the relevant goods and markets them under the same mark and the relevant goods are sold through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicants’ bags and registrants’ clothing are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
Potential for Likelihood of Confusion with Marks in Prior-Filed Applications
In response to this Office action, applicants may present arguments in support of registration by addressing the issue of the potential conflict between applicants’ mark and the marks in the referenced applications. Applicants’ election not to submit arguments at this time in no way limits applicants’ right to address this issue later if a refusal under Section 2(d) issues because of a likelihood of confusion with the mark(s) in the referenced application(s).
Applicants must respond to the following requirement.
Clarification Regarding Applicants’ Entity Types Required
If these individuals are applying together as joint owners/applicants, they must amend the legal entity from “limited liability company” to “individual” and each joint applicant must indicate his or her country of citizenship. See TMEP §803.03(d). Alternatively, if applicant is a limited liability company, applicant must set forth its correct name and U.S. state or foreign country under whose laws it was established. TMEP §803.03(h).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
Response to Office Action Required to Avoid Abandonment
For this application to proceed, applicants must explicitly address each refusal and requirement in this Office action. For a refusal, applicants may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicants should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Jeanine Gagliardi
/Jeanine Gagliardi/
Examining Attorney
Law Office 120
571-272-3177
jeanine.gagliardi@uspto.gov
RESPONSE GUIDANCE
