United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88642017
Mark: HERMEUS
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Correspondence Address:
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Applicant: Hermeus Corporation
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Reference/Docket No. 480470003002
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: December 10, 2019
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.
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. 0883588, 0858299, 0369944, 1942227, 3036116, 3036117, 2866641, 3198963, 3198973, 4256468, 4278653 and 3980546. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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 Marks
Applicant has applied for HERMEUS for clothing.
The registered marks are: (1) HERMES for smocks of silk, dresses, skirts, pants, coats of fabric and leather, vests, short jackets, jackets of fabric and leather, dressing gowns, bathrobes, [ lingerie, ] pajamas, dressing robes, footwear-namely, shoes and slippers; hosiery, gloving, [ corsets, ] men's and women's belts, neckties, fur cloaks, socks, hats, caps and scarves; (2) HERMES for shoes and slippers; (3) HERMES for ladies' and gentle's belts for outer wear, [ golf gloves and ] sport gloves made of leather, sport belts, sport coats, sport skirts, coats, hats, and caps, the use of men, women, and children, [ leggings, ] scarfs [, and arm bands ]; (4) HERMES PARIS (and design) for men's and women's belts including leather belts, [ neckties, fur cloaks, caps, coats of fabric and leather, vests, short jackets, jackets, skirts, dresses, capes, tailor made ensembles comprising jackets, blazers or waistcoats with trousers, skirts or dresses, suits, rain coats, shirts, hats, ] scarves, [ blouses, smocks, bathrobes, dressing gowns, pajamas, hosiery, socks, ] boots, shoes; (5) HERMES for retail store services via a global computer network in the field of clothing and accessories, namely, scarves and ties, shoes, bath linen, fragrances, perfumery products, jewelry and watches, stationery, smokers' articles; (6) HERMES (and design) for retail store services via a global computer network in the field of clothing and accessories, namely, scarves and ties, shoes; bath linen; fragrances, perfumery products, jewelry and watches; stationery; smokers' articles; (7) HERMES PARIS (and design) for retail store services in the field of clothing and accessories, namely, scarves and ties, belts, shoes; bath linen; tableware; handbags, luggage and leather goods; fragrances, perfumery products, jewelry and watches; stationery; smokers' articles; sporting goods and saddlery; (8) HERMES for Computerized online retail store services in the fields of clothing, fashion accessories, personal care products, baby products and toys, games and toys, home, bath, kitchen, travel wares and accessories, paper products, money clips of common metal, cufflinks; (9) HERMES (and design) for Computerized online retail store services in the fields of clothing, fashion accessories, personal care products, baby products and toys, games and toys, home, bath, kitchen, travel wares and accessories, paper products, money clips of common metal, cufflinks; (10) HERMÈS (and design) for Clothing for men, women and children, namely, [ nightshirts, ] layettes, trunks, swimming trunks, swimming costumes, swim suits, [ overalls, boas, underwear, ] pullovers, sweaters, shirts, [ shirt yokes, shirt fronts, undershirts, ] shoulder wraps; [ lingerie, panties, briefs, saris, ] t-shirts, trousers, suits, [ uniforms, ] topcoats, gabardines; waterproof clothing, namely, waterproof jackets [ and pants, ] parkas, skirts; boots, half-boots, esparto shoes and sandals, beach shoes, [ clogs, ] sport shoes, booties, bath sandals [, boot uppers, fittings of metal for shoes and boots, namely, protective metal members for shoes and boots ] ; fashion clothing accessories for men, women and children, namely, bonnets, top hats, gloves, muffs, mittens, [ money belts, ] cravats, pocket squares, sashes, shawls, [ stockings, tights, braces, ] bibs not of paper, headbands; fur stoles; [ furs, namely, fur jackets; ] foulards [, sarongs, ] and gowns; (11) HERMÈS for Pajamas; [ dressing gowns; nightshirts; ] layettes; robes; pants; bathing trunks; bathing costumes; bathing suits; [ overalls; boas; teddies; ] pullovers; sweaters; [ waistcoats; ] shirts; [ shirt yokes; shirt fronts; ] jumpers; [ collars; underwear; ] breeches for wear; [ underpants; saris; ] tee-shirts; trousers; jackets; suits; [ uniforms; ] gabardines; waterproof clothing, namely, waterproof jackets and pants; overcoats; parkas; skirts, dresses; boots; half-boots; esparto shoes or sandals; beach shoes; [ wooden shoes; ] boots for sports; slippers; footwear; sandals; [ boot uppers; fittings of metal for shoes and boots, namely, protective metal members for shoes and boots; ] fashion clothing accessories for men, women and children, namely, bonnets, top hats, gloves, [ muffs, ] mittens, neckties, belts, [ money belts, ascots, ] pocket squares, sashes, shawls, stockings, socks, [ tights, suspenders, ] bibs not of paper, headbands; fur stoles; [ furs, namely, fur jackets; ] pareos; and (12) HERMÈS PARIS (and design) for shorts, tank tops, jeans, sweatshirts, [ jumpsuits, swimwear, hosiery, layettes, pareos, ] aprons, pants, bathing trunks, bathing suits, [ overalls, boas, teddies, ] pullovers, sweaters, waistcoats, shirts, [ shirt yokes, shirt fronts, ] jumpers, [ collars; underwear, breeches for wear, underpants, saris, ] T-shirts, trousers, jackets, [ suits, uniforms, ] coats; waterproof jackets [ and pants ], overcoats, parkas, skirts, dresses, boots, half-boots, esparto shoes, beach shoes, [ wooden shoes, ] sport shoes, slippers, shoes, [ bath sandals, boot uppers, ] hats, caps, [ top hats, ] gloves, mittens, [ ties, ] belts.
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
Further, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, applicant’s mark, HERMEUS, is an intended derivation of the term HERMES (see attached web page). The dominant literal portions of the marks, HERMEUS versus HERMES, are merely one letter different and are phonetically similar.
Thus, the respective marks are similar.
Similarity of Goods and Services
In this case, the application uses broad wording to describe its “clothing,” which presumably encompasses all goods and/or services of the type described, including registrants’ more narrow articles of apparel (and retail store services featuring apparel). 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).
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 and/or services are related.
Here, applicant and registrant each provide types of clothing and/or retail store or ordering services in the field of clothing.
Because the marks are so highly similar and the goods and services are so closely related, there is a likelihood that purchasers would confuse the sources of the goods and services or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.
Identification of Goods
The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The following are examples of acceptable identifications: “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25. Therefore, applicant must amend the identification to specify the type of clothing.
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
Applicant may adopt the following identification, if accurate:
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
(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 four (4) classes (if applicant seeks to register clothing not in Class 25); however, applicant submitted a fee(s) sufficient for only one (1) class. 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.
Marc J. Leipzig
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@uspto.gov
RESPONSE GUIDANCE