To: | Gildan Branded Apparel SRL (michele.glessner@alston.com) |
Subject: | U.S. Trademark Application Serial No. 88651193 - HIGHLANDER - 34349/537829 |
Sent: | January 24, 2020 03:59:09 PM |
Sent As: | ecom121@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 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88651193
Mark: HIGHLANDER
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Correspondence Address: 101 SOUTH TRYON STREET, SUITE 4000
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Applicant: Gildan Branded Apparel SRL
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Reference/Docket No. 34349/537829
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 24, 2020
SUMMARY OF ISSUES:
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 No. s. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied for the mark HIGHLANDER for Clothing, namely, socks, hosiery, undergarments, loungewear, sleepwear, tops, bottoms; outerwear, namely, jackets; footwear; and headwear.
Registrant New York Yankees Partnership owns U.S. Reg. No. 3804912 for the mark NEW YORK HIGHLANDERS for “Clothing, namely, shirts, T-shirts.”
Registrant Kryptek Outdoor Group, LLC owns U.S. Reg. No. 4478518 for the mark NEW YORK HIGHLANDERS for “Clothing, namely, shirts, pants, coats, jackets, caps, hats, foul weather gear, rainwear, gloves, shorts, sweaters, fleece tops, fleece bottoms, hooded pullovers, sweatshirts, tee shirts, vests, belts, blouses, headwear, balaclavas, face masks, namely, knit face masks and ski masks, coveralls, overalls, jeans, footwear, socks, undergarments, insulating layers and shells, namely, thermal underwear, including camouflage, military, tactical, hunting, outdoor-recreation, thermal, and moisture-wicking styles and combinations thereof.”
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).
Applicant’s mark is HIGHLANDER in standard character form.
U.S. Reg. No. 3804912 is the mark NEW YORK HIGHLANDERS in standard character form.
U.S. Reg. No. 4478518 is the mark KRYPTEK HIGHLANDER in standard character form.
In the present case, the applied-for mark is similar to the registered marks in sound, appearance, and meaning as the applied-for mark is wholly comprised of wording found in both of the registered marks.
Further, the word “highlander” or “highlanders” in each of the marks has a similar meaning. The attached definitions from The American Heritage Dictionary shows that a “highlander” is one who lives in a “highland” or an area with “elevated land” or a “mountainous or hilly section of a country.”
Because the marks are similar in sound, appearance, and meaning, the marks are confusingly similar.
Relatedness of Goods
The compared goods 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
Applicant’s identified goods are: Clothing, namely, socks, hosiery, undergarments, loungewear, sleepwear, tops, bottoms; outerwear, namely, jackets; footwear; and headwear.
The goods in U.S. Reg. No. 3804912 (NEW YORK HIGHLANDERS) are: Clothing, namely, shirts, T-shirts.
The goods in U.S. Reg. No. 4478518 (KRYPTEK HIGHLANDER) are: Clothing, namely, shirts, pants, coats, jackets, caps, hats, foul weather gear, rainwear, gloves, shorts, sweaters, fleece tops, fleece bottoms, hooded pullovers, sweatshirts, tee shirts, vests, belts, blouses, headwear, balaclavas, face masks, namely, knit face masks and ski masks, coveralls, overalls, jeans, footwear, socks, undergarments, insulating layers and shells, namely, thermal underwear, including camouflage, military, tactical, hunting, outdoor-recreation, thermal, and moisture-wicking styles and combinations thereof.
Both applicant and registrant Kryptek Outdoor Group, LLC offer socks, undergarments, jackets, footwear, and headwear.
The attached Internet evidence consists of webpages from Uniqlo and Asos. In both cases, the evidence shows that the entity manufactures and sells its own loungewear, tops (including T-shirts), and bottoms. This evidence establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are similar or complementary in terms of purpose or function. Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
MANDATORY ELECTRONIC FILING RULES ADVISORY
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
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.
/Uka Onuoha/
Examining Attorney
Law Office 121
(571) 270-5781
uka.onuoha@uspto.gov
RESPONSE GUIDANCE