| To: | Karl Stien (abourget@bourgetlaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88638647 - BICYCLE BOOTY - 1343.0023 |
| Sent: | January 14, 2020 07:37:22 PM |
| Sent As: | ecom115@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 |
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. 88638647
Mark: BICYCLE BOOTY
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Correspondence Address: |
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Applicant: Karl Stien
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Reference/Docket No. 1343.0023
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 14, 2020
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
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 No. 3004201. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Applicant’s mark is “BICYCLE BOOTY” in standard characters for “apparel goods; clothing and sports clothing apparel and outerwear, namely, pants, sweatpants, shorts, tank tops, t-shirts, short-sleeved shirts, long-sleeved shirts, sweatshirts, jackets, hats, caps, gloves, socks, pullovers, hoodies, vests; clothing for athletic use, namely, padded shorts, padded pants, padded shirts, padded elbow compression sleeves; footwear” in International Class 25.
The mark in U.S. Registration No. 3004201 is “BIKER BOOTY” in standard characters for “shirts; pants; pants, namely, short pants; skirts; dresses; underwear; thongs; socks; headgear, namely, hats and caps” in International Class 25.
Comparison 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).
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). Applicant’s “BICYCLE” and registrant’s “BIKER” wording are similar in meaning, as “BIKER” means “one who rides a bicycle.” See attached evidence from American Heritage dictionary. The similar terms also result in the marks being similar in sound, appearance, and meaning. Further, because of the similarity of the first word and identical last word in each of the marks, the marks as a whole create a similar commercial impression, as both create the same impression of “BOOTY” clothing for use with “BICYCLES” and/or by “BIKERS”.
For the aforementioned reasons, consumers are likely to mistakenly believe that applicant’s and registrant’s marks identify the same source. Thus, the marks are confusingly similar.
Comparison of the Goods
Determining likelihood of confusion is based on the description of the goods and/or 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 application uses broad wording to describe “apparel goods,” which presumably encompasses all goods of the type described, including registrant’s narrower “shirts; pants; pants, namely, short pants; skirts; dresses; underwear; thongs; socks; headgear, namely, hats and caps.” Likewise, registrant’s “shirts; pants; pants, namely, short pants; skirts; dresses; underwear; thongs; socks; headgear, namely, hats and caps” presumably encompasses applicant’s “clothing and sports clothing apparel and outerwear, namely, pants, sweatpants, shorts, tank tops, t-shirts, short-sleeved shirts, long-sleeved shirts, sweatshirts, hats, caps, socks; clothing for athletic use, namely, padded shorts, padded pants, padded shirts.” 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)). That applicant indicates it is providing all of the various clothing and apparel goods in its application further illustrates that the goods are related.
Additionally, the goods and/or services 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.
For the foregoing reasons, registration is refused under Section 2(d) of the Trademark Act as to applicant’s goods in International Class 25.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes features or characteristics of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, applicant is seeking registration of BICYCLE BOOTY for “apparel goods; clothing and sports clothing apparel and outerwear, namely, pants, sweatpants, shorts, tank tops, t-shirts, short-sleeved shirts, long-sleeved shirts, sweatshirts, jackets, hats, caps, gloves, socks, pullovers, hoodies, vests; clothing for athletic use, namely, padded shorts, padded pants, padded shirts, padded elbow compression sleeves; footwear” in Class 25. American Heritage dictionary shows that “BICYCLE” means “a vehicle consisting of a light frame mounted on two typically wire-spoked wheels one behind the other and usually having a seat, handlebars for steering, brakes, and two pedals by which it is driven,” “BOOTY” means “the buttocks,” and the phonetically equivalent “BOOTIE” means “a shoe or low boot extending to either just below or just above the anklebone”. The attached internet evidence from aerotechdesigns.com, benscycle.com, boure.com, and kucharikclothing.com shows that “BICYCLE” is commonly used in conjunction with apparel goods to describe that such goods are for use with bicycles or while cycling. The attached evidence from amiclubwear.com, dollskill.com, iheartraves.com, prettylittlething.us, dsw.com, macys.com, and nordstrom.com shows that forms of “BOOTY” and “BOOTIE” are commonly used to describe garments which accentuate the appearance of the buttocks and footwear extending to just below or just above the anklebone, respectively. Thus, applicant’s mark merely describes features or characteristics of applicant’s goods, in that they will presumably be for use while bicycling, for accentuating the buttocks, and/or are in the nature of short boots.
When these individual words are combined into one term, i.e., the applied-for mark BICYCLE BOOTY, the meaning of the compound term is still apparel goods that are for use while bicycling, for accentuating the buttocks, and/or are in the nature of anklebone-height boots. The individual words within the composite term retain their original meaning and no additional meaning is created by their combination. As a result, the relevant public would perceive the mark as a whole to be merely descriptive of features or characteristics of applicant’s goods, namely that they are garments apparel goods for use while bicycling, for accentuating the buttocks, and/or are in the nature of anklebone-height boots. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise non-descriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods. Specifically, the meaning of “BICYCLE BOOTY” as a combined term is still clothing for use with bicycles which either accentuates the buttocks or consists of a shoe or low boot extending to either just below or just above the anklebone.
Regarding the applicant’s spelling of BOOTY, a novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j). Particularly in the context of applicant’s footwear, applicant’s “BOOTY” would be understood to refer to the shoe or low boot, thus the misspelling does not obviate the merely descriptive nature of the term.
Thus, applicant’s mark is merely descriptive of features or characteristics of applicant’s goods. Accordingly, registration is refused under Trademark Act Section 2(e)(1).
ADVISORY: SUPPLEMENTAL REGISTER OPTION
Please note that the following advisory pertains only to the refusal under Section 2(e)(1) and will not overcome other issue(s) herein.
Although an amendment to the Supplemental Register may normally be an appropriate response to a Section 2(e)(1) refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
IDENTIFICATION OF GOODS REQUIREMENT
If applicant’s “apparel goods” are in International Class 25, applicant may amend the identification to insert the word “namely,” after “apparel goods” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Likewise, applicant must clarify the nature of its various covers, protectors, mats, and liners in Class 12, which are indefinite because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. To the extent possible, applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Further, many of these goods are overbroad, as, for instance, “fitted covers for vehicles” are in International Class 12, while “unfitted covers for vehicles” are in International Class 22. Likewise, “bed mats being fitted covers for truck beds” are in Class 12, whereas “truck bed mats in the nature of floor mats for vehicles” are in Class 27.
Applicant may substitute the following identification, if accurate:
Class 10: padded elbow compression sleeves for athletic use
Class 12: combination tailgate and truck bed protectors in the nature of fitted truck bed liners; fitted truck bed liners; tailgate protectors being {specify nature of good, e.g., fitted covers for truck tailgates}; tailgate protectors in the form of a fitted cover for the top edge of land vehicle tailgate doors; automotive and land vehicle parts and accessories, namely, fitted bed liners and bed mats being fitted covers for truck beds
Class 25: apparel goods; clothing and sports clothing apparel and outerwear, namely, pants, sweatpants, shorts, tank tops, t-shirts, short-sleeved shirts, long-sleeved shirts, sweatshirts, jackets, hats, caps, gloves, socks, pullovers, hoodies, vests; clothing for athletic use, namely, padded shorts, padded pants, padded shirts, padded elbow compression sleeves sold as an integral component of athletic clothing, namely, {specify clothing item, e.g., jersey, uniform, etc.}; footwear
Class 27: truck bed mats in the nature of floor mats for vehicles
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services 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 and/or services that are classified in at least seven classes; however, applicant submitted a fee sufficient for only two 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.
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.
/Jim Hill/
James Hill
Examining Attorney
Law Office 115, USPTO
(571) 270-5682
james.hill@uspto.gov
RESPONSE GUIDANCE
