To: | Daisy Keech (daisysfit@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88748806 - THE HYPE HOUSE - N/A |
Sent: | April 06, 2020 10:12:17 AM |
Sent As: | ecom109@uspto.gov |
Attachments: |
Attachment - 1
Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88748806 Mark: THE HYPE HOUSE | |
Correspondence Address: | |
Applicant: Daisy Keech | |
Reference/Docket No. N/A Correspondence Email Address: | |
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: April 06, 2020
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject marks of U.S. Registration No. 2182846 and 3369139. (copies are attached hereto). Id. § 1052(d); see TMEP § 1207.01. The registrations are owned by the same entity.
The cited marks are “HYPE,” the subject of Registration No. 2182846, for “women's dress and casual and athletic shoes and boots and women's and children's slippers, men's, women's and children's belts and sleepwear, namely, nightgowns, pajamas and bathrobes, foundation garments, in the nature of panties, slips”, and “HYPE,” the subject of Registration No. 3369139, for “scarves, hats, jackets, coats; women's clothing, namely, shirts, blouses, sweaters, cardigans, dresses, skirts, pants; Sleepwear, namely, nightgowns, pajamas and bathrobes; foundation garments in the nature of panties and slips; children's slippers; women's dress, casual and athletic shoes, boots and slippers.”
Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services. 15 U.S.C. § 1052(d); see TMEP § 1207.01. In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark. 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor. In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010). In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely. See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.
For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety. Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014).
Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, “but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.” In re Davia, 110 U.S.P.Q.2d 1810, 1813 (TTAB 2014). Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks. See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b).
Additionally, the appearance of registrations of marks in standard character or typeset lettering “may be changed at any time at the whim of its owner; rights in such a mark reside in the term itself rather than in any particular form thereof.” In re Melville Corp., 18 U.S.P.Q.2d 1386, 1388 (TTAB 1991); see In re RSI Systems, LLC, 88 U.S.P.Q.2d 1445 (TTAB 2008). Therefore, in comparisons between standard character marks and special form marks comprised depicted entirely of stylized lettering, “stylized lettering does not provide a significant difference between the marks.” In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003).
Here, the marks share the common term “HYPE.” The term “HYPE” in each of the marks would share the same meaning or connotation to the relevant consumer, and the term is inherently distinctive as suggestive as applied to the respective goods and services.
Additionally, the applicant’s proposed mark, HYPE HOUSE, is presented in standard character form. One of the cited registered marks is a special form mark consisting entirely of stylized lettering, and the other registered mark is presented in standard character form or the typeset lettering equivalent. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008). Therefore, in actual use, Applicant’s proposed mark may be displayed in a same manner of placement, font, style, color and size as any of the cited registered marks. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).
It is noted that the applicant has added the descriptive term HOUSE to its mark. The term HOUSE is defined in relation to fashion items as “a company or organization involved in a particular activity; used in the name of some companies, especially those that design and sell clothes”. Macmillan Dictionary (attached hereto) and thus describes the source of the applicant’s goods. Here, it is important to note that 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). In this case, it appears that HYPE is the dominant portion of the applicant’s mark.
Comparison of the Goods
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined based on the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018). “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002).
Here, the applicant and the registrant are both providing items of clothing. The goods of both parties are likely to be marketed in the same manner and travel in the same channels of trade, which may lead consumers to believe that the goods emanate from a common source.
In light of the above, because the marks are similar and the goods being provided by both parties are closely related, registration must be refused under Section 2(d) of the Trademark Act.
The applicant must note the following, additional ground for refusal.
Ornamental Refusal
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).
In this case, the submitted specimen shows the applied-for mark, THE HYPE HOUSE, located directly on the upper-center area of the front of the shirt, where ornamental elements often appear. See TMEP §1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
The applicant must respond to the following issue(s).
Disclaimer
Applicant must disclaim the term HOUSE because it is merely descriptive 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).
As noted above, the term HOUSE is defined in relation to fashion items as “a company or organization involved in a particular activity; used in the name of some companies, especially those that design and sell clothes”. MACMILLAN DICTIONARY (attached hereto) and thus describes the source of the applicant's goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HOUSE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
If the applicant has any questions or requires assistance in responding to this Office action, please contact the undersigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/Amy Alfieri/
Trademark Examining Attorney
Law Office 109
571-272-9422
amy.alfieri@uspto.gov
RESPONSE GUIDANCE