To: | Barbara A. Brock (alichy@lichylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88637952 - THE TRAVELER - N/A |
Sent: | September 30, 2020 08:55:27 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88637952
Mark: THE TRAVELER
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Correspondence Address: |
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Applicant: Barbara A. Brock
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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: September 30, 2020
This letter is in response to the applicant’s communication dated August 17, 2020. The examining attorney withdraws the refusal to register based on a likelihood of confusion with U.S. Registration Number 5630045. However, the descriptiveness refusal is continued. Upon further review the applicant should be advised by the following additional refusal. Examining attorney apologizes for any inconvenience caused by raising this additional issue at this time.
LIKELIHOOD OF CONFUSION
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
The applicant has applied for the mark THE TRAVELER. The registrant’s mark is E LE TRAVELER. The English translation of LE is THE. See attached dictionary definition. Here, both mark contain a variation of the phrase THE TRAVELER.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Similarity of the Goods
The applicant’s mark is for vanity bags and cases sold empty. The registrant’s mark is for alpenstocks; attaché cases; backpacks; bags for climbers in the nature of all-purpose carrying bags; beach bags; briefcases; business card cases; canvas shopping bags; handbags; harness fittings; haversacks; leather laces; mesh shopping bags; name card cases; pet clothing; pocket wallets; pouch baby carriers; purses; school bags; slings for carrying infants; sports bags; suitcases; travelling bags; travelling trunks; trunks; umbrellas; valises; vanity cases, not fitted; waist bags. Here, both marks are for vanity cases.
For the above stated reasons the mark is refused due to a likelihood of confusion.
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.
DESCRIPTIVENESS
The refusal to register based on descriptiveness is continued. Here, the applicant’s mark is THE TRAVELER for vanity bags and cases sold empty.
For the above stated reasons the refusal to register based on descriptiveness is continued.
How to respond. Click to file a response to this nonfinal Office action.
/Shaunia Carlyle/
Examining Attorney
Law Office 110
United States Patent and Trademark Office
571-272-9374
shaunia.carlyle@uspto.gov
RESPONSE GUIDANCE