To: | Bangarang Enterprises, LLC (dana@delvuklaw.com) |
Subject: | U.S. Trademark Application Serial No. 88650499 - GANDERGROUP - N/A |
Sent: | January 15, 2020 07:07:50 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88650499
Mark: GANDERGROUP
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Correspondence Address: 2600 MICHELSON DRIVE, SUITE 1700
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Applicant: Bangarang Enterprises, LLC
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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: 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.
SECTION 2(d) PARTIAL 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. 1559875. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is GANDER GROUP (and design) for use with “Aprons; Bath robes; Belts; Caps being headwear; Hats; Jackets; Neck scarves; Shirts; Sports jerseys; Tee shirts; Visors being headwear” in International Class 25.
Registrant’s mark is GANDER BRAND (and design; “BRAND” disclaimed) for use with “clothing, namely, work gloves, safety gloves, safety and protective clothing, namely, welding gloves, welding jackets, welding sleeves, welding aprons, welding overalls, welding rod pockets; rainwear, namely, rainsuits, rain jackets, rain pants, rain overalls, rain hats; welding accessories, namely, sweatbands, helmets, pats, cap liners, glove liners” in International Class 25.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
Applicant’s and registrant’s marks are similar in appearance, sound, meaning and overall commercial impression due to use of the identical term “GANDER” combined with a non-distinctive term and imagery of birds. 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). The identical wording and similar design elements create the same overall impression of a gander.
The additional wording “BRAND” in registrant’s mark and “GROUP” in applicant’s mark are at best descriptive of the goods and thus do no significantly alter the overall commercial impressions of the marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Because these terms are non-distinctive, consumers must rely on the identical wording “GANDER” to discern the source of the goods.
Finally, the design elements showing birds also contribute to the identical overall commercial impressions of ganders.
Because the identical wording and similar designs create the identical overall commercial impression, the marks are confusingly similar.
Relatedness of the Goods
The goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case, the application uses broad wording to describe “aprons; caps being headwear; hats; jackets; shirts; tee shirts,” which presumably encompasses all goods of the type described, including registrant’s more narrow “welding jackets, welding aprons; rainwear, namely, rain jackets, rain hats.” 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)).
Additionally, the goods 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.
Conclusion
Because the marks are confusingly similar and the goods are related, registration is refused under Section 2(d) of the Trademark Act.
Response to Section 2(d) Partial Refusal
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
OVERBROAD AND INDEFINITE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
Class 21
The wording “food storage containers” in the identification of goods for International Class 21 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass plastic food storage containers for commercial or industrial use in Class 20 or food storage containers for household use in Class 21.
Suggested Amendments
Applicant may substitute the following wording, if accurate:
Class 11 –
Air fryers; Electric deep fryers; Electric kettles; Electric pressure cookers; Electric rice cooker; Electric slow cookers; Electric toasters; Electric waffle maker; Electric woks; Fabric steamers; Multi-purpose, electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food; Electric fans with evaporative cooling devices; Electric food steamers
Class 14 –
Jewelry; Jewelry boxes; Jewelry cases; Watches
Class 20 –
Beach chairs; Clothes hangers; Coat hangers; Furniture for camping; Plastic crates; Plastic food storage containers for commercial or industrial use
Class 21 –
Bakeware; Baking dishes; Barbecue mitts; Basting brushes; Basting spoons; Beverage glassware; Brooms; Buckets; Ceramic sculptures, vases, vessels, bowls, plates and pots; Cheese board and knife set; Cleaning brushes for barbecue grills; Coal scuttles; Cocktail glasses; Cocktail shakers; Cooking utensils, namely, grills; Cookware, namely, stainless steel and copper pots and pans; skillets, roasting pans, and non-electric food steamers; copper bakeware, copper cookware in the nature of cookie sheets, muffin pans, baking pans, mixing bowls, and food storage containers for household use; Cooling buckets for wine; Corkscrews; Crockery, namely, pots, dishes, drinking cups and saucers, bowls, serving bowls and trays; Cups and mugs; Cutting boards; Dessert plates; Dinnerware; Drinkware; Drying racks for laundry; Dustbins; Fitted picnic baskets; Flower pots; Garbage cans; Gardening gloves; Hand-operated salt and pepper mills; Household utensils, namely, whisks, spatulas, graters, kitchen tongs, strainers, turners, ladles, steamer baskets; Ice buckets; Ice scoops; Ice tongs; Insulated mugs; Ironing boards; Margarita glasses; Martini glasses; Mason jars; Mixing bowls; Mixing cups; Mixing spoons; Mops; Non-electric griddles; Non-electric portable beverage coolers; Oven mitts; Pails; Picnic baskets sold empty; Pitchers; Plates; Portable coolers, non-electric; Pot holders; Salad bowls; Salt and pepper shakers; Serving dishes; Serving forks; Serving ladles; Serving platters; Serving spoons; Serving tongs; Serving trays; Steamer baskets; Tea sets; Thermal insulated bags for food or beverages; Thermal insulated containers for food or beverages; Utensils for barbecues, namely, forks, tongs, turners; Watering cans; Wine aerators; Wine bottle cradles; Wine buckets; Wine cooling pails; Wine glasses; Wine jugs; Wine openers; Wine pourers; Wine strainers; Cooking utensils, namely, barbecue branders; Drinking glasses, namely, tumblers; Laundry hampers for domestic or household use; Non-electric carpet sweepers
Class 25 –
Aprons; Bath robes; Belts; Caps being headwear; Hats; Jackets; Neck scarves; Shirts; Sports jerseys; Tee shirts; Visors being headwear
Amendment Guidelines
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 this case, applicant must disclaim the wording “GROUP” because it is not inherently distinctive. This unregistrable term at best merely describes of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence shows this wording means “an assemblage of persons or objects gathered or located together; an aggregation.” See attached http://ahdictionary.com/word/search.html?q=group. The term is commonly used akin to an entity designation to indicate that the business is comprised of multiple persons or entities. Thus, the wording merely describes applicant’s business.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GROUP” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
NEW DRAWING OF THE MARK REQUIRED
Applicant must submit a new drawing with the TM symbol deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable. See 37 C.F.R. §2.72; TMEP §807.14(a). Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about deleting matter from the drawing, see the Drawing webpage.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
RESPONSE GUIDELINES
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.
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.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE