Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 15, 2020

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant 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.

 

Summary of Issues Applicant Must Address

• Section 2(d) Refusal – Likelihood of Confusion
• Requirement for Applicant’s Domicile Address (and Appointment of Attorney, if applicable)
• Requirement for Acceptable Identification of Goods
• Requirement for Information and Documentation
• Requirement for Additional Specimens
• Requirement for Additional Filing Fee – Loss of TEAS Plus Status

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2331888, 5355764, and 5636019.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant has applied to register AVANTI in standard-character form for:

 

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Board shorts; Boardshorts; Boxer shorts; Bucket hats; Button down shirts; Button-front aloha shirts; Camp shirts; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Collared shirts; Dresses; Dresses for WOMEN; Dresses for CHILDREN; Embroidered clothing, namely, SHIRTS; Fabric sold as an integral component of finished clothing items, namely, FABRIC LINING; Graphic T-shirts; Hats; Headwear, namely, HATS; Headwear, namely, BALL CAPS; Knit shirts; Knitwear, namely, MEN; Knitwear, namely, WOMEN; Knitwear, namely, CHILDREN; Long-sleeved shirts; Open-necked shirts; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for MEN; Shirts for WOMEN; Shirts for CHILDREN; Short-sleeve shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Shorts; Shorts for MEN; Shorts for WOMEN; Skirts and dresses; Sport shirts; Sports caps and hats; Sports shirts; Sundresses; Swim suits; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming trunks; Swimsuits; Swimwear; T-shirts; T-shirts for MEN; T-shirts for WOMEN; T-shirts for CHILDREN; Tee shirts; Tee-shirts; Walking shorts; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses; Woven dresses; Woven shirts; Woven shirts for MEN; Woven shirts for WOMEN; Woven shirts for CHILDREN, in Class 25. 

 

The registered marks, owned by three different entities, are the following:

 

Registration No. 2331888 is AVANTE in typed-drawing form for “Clothing, namely, shirts, pants, jackets, shorts, t-shirts, jumpsuits, dresses, headwear,” in Class 25.

 

Registration No. 5355764 is A AVANTI and design for “Costumes for use in children's dress up play; Halloween costumes; Headgear, namely, holiday headwear,” in Class 25.

 

Registration No. 5636019 AVANTI and design for “Athletic uniforms; Gloves; Sport coats; Sport shirts; Sports jerseys,” in Class 25.

 

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.

 

Comparison of the Goods

 

The applicant’s and registrants’ goods are all clothing.

 

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)).  

 

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

Registration No. 2331888

 

In this case, the Registration No. 2331888 includes several categories of clothing, which presumably encompasses all goods of the type described, including the same and more specific types of these clothing in the applicant’s identification.  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)).  The applicant’s other goods are ordinary clothing items that are also closely related to the registrant’s goods.

 

Registration No. 5636019

 

Similarly, the “Athletic uniforms” and “Sport shirts” in Registration No. 5636019 are identical to goods in the applicant’s identification and are encompassed by some of the applicant’s other goods.  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 in part.  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)).  The applicant’s other goods are ordinary clothing items that are also closely related to the registrant’s goods.

 

Registration No. 5355764

 

The applicant’s identification includes a variety of headwear, which may include the “holiday headwear” in Registration No. 5355764.  Similarly, the applicant’s identification includes a variety of goods intended for children that may include costumes.  The applicant’s goods that are not limited to particular consumers, and those for adults, also may include costumes, and thus are closely related to the goods in Registration No. 5355764.

 

All Registrations

 

Additionally, neither the application nor the registrations contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

Comparison of the Marks

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Registration Nos. 5355764, and 5636019

 

In this case, the applicant’s mark AVANTI is similar in commercial impression to the two registered marks that include the term AVANTI.

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

The term AVANTI in all three marks is spelled the same and would be pronounced the same.  The application and registrations all include translations for this term, which differ slightly.  The applicant’s translation is “forward.”  One of the registrations includes the translation “before” in addition to “forward,” and the other includes the translation “come in.”  However, because the term is identical in each mark, whatever translation is attributed to the term in one mark by a particular consumer, would be attributed to the term in the other marks by that same consumer.  See also Merriam-Webster’s Dictionary (2020), http://www.merriam-webster.com/dictionary/avanti (“forward: come in!”). Thus, the marks are similar in meaning. 

 

Although each of the registered marks includes design elements not found in the other mark that help distinguish them from each other, the applicant’s mark is in standard-character form and does not include any design elements. 

 

A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

The applicant’s mark may thus be displayed in the same font style used in the registered marks, and the registered marks may be perceived as a logo form of the applicant’s mark.  Notably, the design elements in these marks do not change the meaning of the common term AVANTI.

 

Thus, when viewed in their entireties, the applicant’s mark is similar in commercial impression to each of the marks in Registration Nos. 5355764, and 5636019.

 

Registration No. 2331888

 

The applicant’s mark AVANTI is also similar in commercial impression to the registered AVANTE mark.

 

The marks are similar in appearance, differing only as to the ending vowel.  Thus, they may also be pronounced the same or very similarly.  The registered mark includes the translation “ahead” or “before,” which is similar in meaning to the translation “forward” in the application.  The applicant is referred to the attached translation evidence confirming that AVANTE may be translated as “forward.”

 

Thus, when viewed in their entireties, the marks are similar in commercial impression.

 

Since the marks are similar and the goods are closely related and legally identical in part, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration, and registration is refused under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration in a formal response using the link at the bottom of this Office action.  Please note that informal communications (phone and email) may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal. TMEP §709.05.  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b). 

 

ADVISORY - Maintenance Documents Due

 

Before filing a response, the applicant is encouraged to check the status of Registration No. 2331888.  Maintenance documents are due for this registration by March 21, 2020, and have not yet been filed.  The registration will then enter the additional 6-month grace period in which the registrant may still file its affidavit with an additional filing fee; this grace period will end on September 21, 2020. The Office normally waits an additional 30 days after the grace period before cancelling registrations.  If the applicant files a response during the grace period, and the Section 8/9 affidavits have still not been filed, action on this application may be suspended.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Applicant’s Domicile Address (and Appointment of Attorney, if applicable)

 

Applicant must provide applicant’s domicile address.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business, i.e. headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box instead of a street address.  In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, applicant must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile.  Examination Guide 4-19, at I.A.3.

 

To provide applicant’s domicile address.  After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.

 

If applicant amends the application to list a domicile street address located outside of the United States or its territories, applicant is foreign-domiciled and must appoint a U.S. licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant’s domicile street address is located within the United States or its territories, applicant is not required to appoint a U.S.-licensed attorney.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

Identification of Goods – As to Specific Goods

 

Applicant’s goods are identified as:

 

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Board shorts; Boardshorts; Boxer shorts; Bucket hats; Button down shirts; Button-front aloha shirts; Camp shirts; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Collared shirts; Dresses; Dresses for WOMEN; Dresses for CHILDREN; Embroidered clothing, namely, SHIRTS; Fabric sold as an integral component of finished clothing items, namely, FABRIC LINING; Graphic T-shirts; Hats; Headwear, namely, HATS; Headwear, namely, BALL CAPS; Knit shirts; Knitwear, namely, MEN; Knitwear, namely, WOMEN; Knitwear, namely, CHILDREN; Long-sleeved shirts; Open-necked shirts; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for MEN; Shirts for WOMEN; Shirts for CHILDREN; Short-sleeve shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Shorts; Shorts for MEN; Shorts for WOMEN; Skirts and dresses; Sport shirts; Sports caps and hats; Sports shirts; Sundresses; Swim suits; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming trunks; Swimsuits; Swimwear; T-shirts; T-shirts for MEN; T-shirts for WOMEN; T-shirts for CHILDREN; Tee shirts; Tee-shirts; Walking shorts; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses; Woven dresses; Woven shirts; Woven shirts for MEN; Woven shirts for WOMEN; Woven shirts for CHILDREN, in Class 25.

 

This requirement is limited to the wording highlighted above in bold.

 

The wording “Fabric sold as an integral component of finished clothing items, namely, FABRIC LINING” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must specify the particular clothing items in which these linings are sold, such as jackets. 

 

The wording “Knitwear, namely, MEN; Knitwear, namely, WOMEN; Knitwear, namely, CHILDREN” in the identification of goods is indefinite and must be clarified to specify particular knitted clothing items, such as shirts, dresses, and sweaters.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The terms MEN, WOMEN, and CHILDREN identify the intended wearers of these goods, not specific types of knitwear.

 

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.  In particular, the applicant is referred to the attached printouts from the Manual for the above Manual entries.

 

To summarize, applicant may adopt any or all of the following identifications of goods, if accurate:

 

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Board shorts; Boardshorts; Boxer shorts; Bucket hats; Button down shirts; Button-front aloha shirts; Camp shirts; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Collared shirts; Dresses; Dresses for WOMEN; Dresses for CHILDREN; Embroidered clothing, namely, SHIRTS; Fabric sold as an integral component of finished clothing items, namely, FABRIC LINING sold as an integral component of jackets; Graphic T-shirts; Hats; Headwear, namely, HATS; Headwear, namely, BALL CAPS; Knit shirts; Knitwear, namely, shirts and sweaters for MEN; Knitwear, namely, shirts, sweaters, and dresses for WOMEN; Knitwear, namely, shirts, sweaters, and dresses for CHILDREN; Long-sleeved shirts; Open-necked shirts; Shirts; Shirts and short-sleeved shirts; Shirts for infants, babies, toddlers and children; Shirts for MEN; Shirts for WOMEN; Shirts for CHILDREN; Short-sleeve shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Shorts; Shorts for MEN; Shorts for WOMEN; Skirts and dresses; Sport shirts; Sports caps and hats; Sports shirts; Sundresses; Swim suits; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming trunks; Swimsuits; Swimwear; T-shirts; T-shirts for MEN; T-shirts for WOMEN; T-shirts for CHILDREN; Tee shirts; Tee-shirts; Walking shorts; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses; Woven dresses; Woven shirts; Woven shirts for MEN; Woven shirts for WOMEN; Woven shirts for CHILDREN, in Class 25.

 

See TMEP §1402.01.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Information and Documentation Requirement – As to Specific Goods

 

This requirement is limited to the following goods:

 

Athletic apparel, namely, pants, jackets, footwear, hats and caps, athletic uniforms; Baseball caps and hats; Boxer shorts; Bucket hats; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Embroidered clothing, namely, SHIRTS; Fabric sold as an integral component of finished clothing items, namely, FABRIC LINING; Hats; Headwear, namely, HATS; Headwear, namely, BALL CAPS; Knit shirts; Knitwear, namely, MEN; Knitwear, namely, WOMEN; Knitwear, namely, CHILDREN; Skirts; Swim suits; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming trunks; Swimsuits; Swimwear; Women's clothing, namely, skirts, in Class 25.

 

To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimens.  See 37 C.F.R. §2.61(b); TMEP §814.  Answer for the hat specimen/photograph/image previously provided as well as each additional specimen submitted in response to this Office action.  For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).

 

(1)        Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)        Was the specimen created for submission with this application?  If so, specify the date each specimen was created.  If applicant obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.

 

(3)        Provide information about and examples of how applicant’s goods appear in the actual sales environment.

(a)        If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark. 

(b)        If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)        If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment. 

 

(4)        If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)        For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)        For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.

 

Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application filing basis to intent-to-use under Section 1(b) will resolve this requirement for information and documentation.

 

Specimen Requirement – As to Specific Goods

 

This requirement is limited to the goods identified below.

 

Given the variety of goods that applicant has listed in the application, applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b).  37 C.F.R. §2.61(b); see TMEP §904.01(a).  See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR §2.61(b); TMEP §§904.01(a) and 1402.03.  Please note that for every specimen submitted, applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the goods.

 

Applicant must submit one (1) proper specimen for each of the following groups of goods:

 

1)      Athletic apparel, namely, pants,

 

2)      Athletic apparel, namely, jackets,

 

3)      Athletic apparel, namely, footwear,

 

4)      Athletic apparel, namely, athletic uniforms;

 

5)      Boxer shorts;

 

6)      Bucket hats;

 

7)      Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments;

 

8)      Embroidered clothing, namely, SHIRTS;

 

9)      Fabric sold as an integral component of finished clothing items, namely, FABRIC LINING;

 

10)  Knit shirts; Knitwear, namely, MEN; Knitwear, namely, WOMEN; Knitwear, namely, CHILDREN;

 

11)  Skirts; Women's clothing, namely, skirts; and

 

12)  Swim suits; Swim trunks; Swim wear; Swim wear for gentlemen and ladies; Swimming trunks; Swimsuits; Swimwear.

 

Applicant is advised that a mock-up of a product or its packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).  In addition, a photograph of the mark on a label, tag, or piece of paper placed on top of applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a).  Therefore, specimens comprising digitally altered images or mock-ups will not satisfy this requirement.

 

If applicant cannot submit proper specimens for the goods subject to this requirement, applicant may amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.  For an overview of this response option and instructions on how to satisfy this option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

In the alternative, the applicant may delete any goods that are not yet in use in commerce.

 

Additional Filing Fee Required – Loss of TEAS Plus Status

 

Applicant filed a TEAS Plus application that identified one or more goods and/or services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding goods.  Specifically, the applicant selected three instances of “Knitwear, namely, {indicate specific knitted clothing items, e.g., shirts, dresses, sweaters, etc.},” and instead of completing the blank with specific knitted clothing items, inserted categories of consumers, MEN, WOMEN, and CHILDREN.  Men, women, and children are clearly not types of knitwear.

 

At the time of filing, a TEAS Plus application must include an identification of goods and/or services from the ID Manual.  TMEP §819.01(g); see 37 C.F.R §2.22(a)(8).  By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual.  See TMEP §819.01(g). 

 

Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $125 per class.  See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04.  The additional fee is required even if applicant later satisfies this requirement by properly filling in the blank or deleting the unacceptable wording in the identification.  TMEP §819.01(g).

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant 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.

 

The USPTO does not accept emails as responses to Office actions; emails used for informal communications will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  See Hiring a U.S.-licensed trademark attorney for more information.  USPTO personnel cannot provide legal advice or statements about an applicant’s legal rights, act as a counselor for individuals, or recommend a qualified practitioner.  TMEP §§705.02, 709.06. 

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@uspto.gov

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 15, 2020 for

U.S. Trademark Application Serial No. 88641451

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 15, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”