To: | KAWS Inc. (lferrari@cozen.com) |
Subject: | U.S. Trademark Application Serial No. 88656985 - NEW FICTION - 6396-6 |
Sent: | January 14, 2020 08:08:49 PM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88656985
Mark: NEW FICTION
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Correspondence Address:
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Applicant: KAWS Inc.
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Reference/Docket No. 6396-6
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
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.
Refusal to Register under Trademark Act Section 2(d) – Likelihood of Confusion Only with Respect to International Class 9
Only with respect to International Class 9, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2157345. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The term “FICTION” is dominant and identical in appearance, sound and meaning in the marks. The marks consist entirely of the word “FICTION” with no distinguishing literal, stylized or design features. Thus, the term “FICTION” in the marks creates an identical commercial impression.
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”).
In addition, the marks are used in connection with the same and related goods that are sold in the same trade channels, i.e., eyewear in the nature of eyeglasses, sunglasses, eyeglass frames, and cases for eyeglasses and sunglasses. Given the similarity of the marks, goods and trade channels for the goods, consumers are likely to be confused as to source. See attached selected excerpts from the Internet referencing sale of the goods of applicant and registrant in the same trade channels.
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.
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).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
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)).
Comparison of the Goods and Trade Channels
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
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).
Doubt Resolved in Favor of Registrant
Citation to Prior Pending Conflicting Reference
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 mark in the referenced application. 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
Identification of Goods Amendment Required
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.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
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.
Applicant may adopt the following wording in International Classes 6, 9, 14, 16, 18, 20, 25, 28, 35, 41 and 42, if accurate.
Class 6: Works of art of common metals, alloys and ores; containers of metal for storage and transport of goods; safes.
Class 9: Downloadable augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of entertainment, art appreciation and promotion of artwork; downloadable electronic publications, namely, newsletters, magazines, books, workbooks, worksheets, playbooks, newspapers and coloring books in the field of art, works of art and contemporary culture; downloadable mobile applications for use in displaying, retrieving, and creating artworks; bags adapted for laptops; bags for cameras and photographic equipment; hologram apparatus; cases for smartphones; headphones; sunglasses; eyeglasses; cases for sunglasses and eyeglasses; decorative magnets; downloadable photographs; downloadable multimedia files containing artwork, text, audio, visual, and/or Internet Web links featuring art and contemporary culture; pre-recorded multimedia, audio and/or video discs, tapes, DVDs, cassettes, MP3 and/or MP4 files featuring art and contemporary culture; downloadable computer game software.
Class 14: Jewelry; key rings of precious metals and their alloys; pins being jewelry; precious stones; semi-precious stones; horological and chronometric instruments, namely, watches and clocks.
Class 16: Printed books in the field of art; bookbinding material; greeting cards; postcards; photographs; stationery; stationery, namely, postcards and greeting cards; office requisites, except furniture, namely, pens, pencils, paper and notebooks; adhesives for stationery or household purposes; artists’ materials, namely, pens, pencils, paper and notebooks; paintbrushes; printed educational, instructional and teaching materials in the field of art; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks.
Class 18: Leather and imitation leather; luggage; all-purpose carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, animal leashes; clothing for animals.
Class 20: Furniture, mirrors, picture frames; containers, not of metal, for storage or transport of goods; works of art made of unworked or partly worked mother-of-pearl; works of art made of shells, unworked and/or partly worked shells; works of art made of unworked and/or partly worked meerschaum; works of art made of unworked and/or partly worked yellow amber.
Class 25: Clothing, namely, shirts, t-shirts, sweatshirts, sweaters, hoodies, hats, caps, jackets, socks, gloves, belts, sneakers; footwear; headwear.
Class 28: Games, namely, puzzles; tabletop games, board games, parlour games, and playing cards; toys, namely, soft sculpture toys and plush toys; toy figures; collectable toy figures; toy vehicle play sets and accessories therefor; toy action figure play sets and accessories therefor; doll play sets and accessories therefor; play sets for creating decorative design and art and accessories therefor; inflatable toys; inflatable pool toys; inflatable dolls and playthings; arcade video game machines, video game consoles, hand-held video game units; gymnastic and sporting articles, namely, footballs, baseballs, basketballs, soccer balls, racquet balls, racquets, bats, golf bags, golf balls, boards used in the practice of water sports, rollerblades, roller skates, skateboards; Christmas tree decorations.
Class 35: Promoting the goods and services of visual artists; creative marketing plan development services; development of advertising and marketing materials for others; online retail store services featuring artwork and a wide variety of consumer goods; providing advertising, marketing and promotional services for a visual artists.
Class 41: Educational services, namely, providing seminars, conferences, classes and workshops in the fields of art and contemporary culture; training services in the fields of art and contemporary culture; entertainment services, namely, providing information about visual artists via an online network; entertainment services, namely, providing on-line computer games; organizing cultural and arts events; information, advisory and consultancy services relating to all the aforementioned.
Class 42: Animation and special-effects design for others; design and development of multimedia products; graphic arts design; graphic illustration services for others; computer graphic design services; computer services, namely, hosting an interactive website that allows users to upload images, graphics, fonts, photographs, text, videos and data; providing temporary use of non-downloadable software and application software for the transmission of images, graphics, fonts, photographs, text, videos and data.
/Barbara A. Gold, Esq./
United States Patent and Trademark Office
Law Office 106
(571) 272-9165
Barbara.gold@uspto.gov
RESPONSE GUIDANCE