United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88681600
Mark: DRILL CHORE
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Correspondence Address: |
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Applicant: Vans, Inc.
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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 13, 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 TO WHICH APPLICANT MUST RESPOND:
Also contained herein is a Supplemental Register Advisory.
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. 2635423 and 2946204. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Note: The cited registrations are owned by the same Registrant.
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 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. 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 and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
Applicant's mark is DRILL CHORE.
Registrant's marks are DRILL CLOTHING COMPANY and DRILL.
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).
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).
Here, the compared marks are identical in part with respect to the term “DRILL”. Thus, the marks look and sound similar and convey the same overall commercial impression. Marks may be confusingly similar in appearance where, as here, 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 additional term “CHORE” in Applicant’s mark and the terms “CLOTHING COMPANY” in Registrant’s mark fail to obviate this refusal. Notably, consumers are generally more inclined to focus on the first word in any trademark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Further, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that Applicant's goods sold under the “DRILL CHORE” mark constitute a new or additional product line from the same source as the goods sold under the “DRILL CLOTHING COMPANY” and “DRILL” marks with which they are acquainted or familiar, and that Applicant’s mark is merely a variation of the Registrant’s marks. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (the applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with the opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
For the reasons set forth more fully above, the compared marks are confusingly similar.
Comparison of the Goods
Applicant's goods are Coats; Jackets.
Registrant's goods are men's and lady's clothing, namely shirts, pants, jackets, denim jackets, denim pants, denim shirts, leather shirts, leather pants, leather jackets and men's and lady's clothing; namely knitted and woven shirts, pants, jackets, suits, denim shirts and pants, leather shirts and leather jackets.
Determining likelihood of confusion is based on the description of the goods 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)).
As an initial matter, the Examining Attorney notes that the goods are identical in part with respect to “jackets”. Further, the attached thesaurus evidence demonstrates that a “coat” is a synonym for a “jacket”. Thus, Applicant’s identified goods are fully covered by those of Registrant. Therefore, the goods are legally identical.
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)).
Therefore, Applicant’s and Registrant’s goods are considered related for likelihood of confusion purposes.
Conclusion
For the foregoing reasons, registration of the applied-for mark is refused pursuant to Section 2(d) of the Trademark Act.
ADVISORY – PRIOR-FILED PENDING APPLICATION
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.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature of Applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Applicant's mark is DRILL CHORE for Coats; Jackets.
Here, the applied-for mark consists of the combined terms “DRILL CHORE”. Where, as here, the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
The attached dictionary evidence defines “DRILL” as “a durable cotton twilled fabric”. See http://www.merriam-webster.com/dictionary/drill. The attached Internet evidence from The Remnant Warehouse, Nordstrom Rack, Net-A-Porter, and Gucci demonstrates that third parties commonly use the term “DRILL” to describe the fabric used to make various clothing items. The additional attached Internet evidence from GQ, Carhartt, and Heddels demonstrates that a “CHORE” coat refers to jackets and coats for wear while working.
Thus, in this case, both the individual components and the composite result of the terms “DRILL CHORE” are descriptive of Applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the evidence set forth above establishes that, taken together, the wording “DRILL CHORE” evokes a chore coat or jacket made of drill fabric. The specimen of record describes Applicant’s goods as a “chore coat” made of “100% BCI Cotton”. Therefore, as used in the applied-for mark, the wording “DRILL CHORE” immediately and directly conveys the type of coats and jackets Applicant sells and the material composition thereof. As these are key features of the goods, registration must be refused.
Conclusion
For the foregoing reasons, the applied-for mark is merely descriptive of a feature of Applicant's goods and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Although Applicant’s mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER ADVISORY
If Applicant responds to the refusals, then Applicant must also respond to the requirement set forth below.
Additional Information Required
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of Applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods is available on Applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, Applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and information regarding competing goods is not available, Applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
· Are Applicant goods made of drill fabric or drill cloth?
· Do Applicant’s goods contain drill fabric or drill cloth?
· What is the material composition of Applicant’s goods?
· Who is the typical consumer of Applicant’s goods?
· Where are Applicant’s goods typically purchased?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
HOW TO RESPOND
For this application to proceed, Applicant must explicitly address each refusal and 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.
Click to file a response to this nonfinal Office action.
ASSISTANCE
Please call or email the assigned Trademark Examining Attorney with questions about this Office action. Although the Trademark Examining Attorney cannot provide legal advice or statements about Applicant’s rights, the Trademark Examining Attorney can provide Applicant with additional explanation about the refusals and requirement in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Samantha Sherman/
Examining Attorney
Law Office 123
571-270-0903
samantha.sherman@uspto.gov
RESPONSE GUIDANCE