United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 15, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Refusal Section 2(d) – Likelihood of Confusion
• Filing Basis – Section 44(d) Sole Basis with No Intent to Perfect 44(e)

 

Refusal Section 2(d) – 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. 5040165.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant has applied to register the mark TANTRUM (standard characters) for “Clothing and headwear, namely, T-shirts, shorts, sweat pants, sweat shirts, swimwear, jackets, wet suits, jeans, slacks, woven shirts, knit shirts, tank tops, socks, sweaters, hats, beanies, caps; Footwear.”

 

The mark in U.S. Registration No. 5040165 is TANTRUM INK (standard characters) for “Hats; Pants; Bottoms; Hoods; Jackets; Jerseys; Skirts and dresses; Tops.”

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Comparison 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Here, the applicant’s mark is highly similar to the mark in the cited U.S. Registration.  The applicant has merely deleted the term INK from the registered mark.  Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Comparison of the Goods and/or Services

The compared goods and/or services 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).

 

The applicant’s goods are “Clothing and headwear, namely, T-shirts, shorts, sweat pants, sweat shirts, swimwear, jackets, wet suits, jeans, slacks, woven shirts, knit shirts, tank tops, socks, sweaters, hats, beanies, caps; Footwear.”

 

The goods in U.S. Registration No. 5040165 are “Hats; Pants; Bottoms; Hoods; Jackets; Jerseys; Skirts and dresses; Tops.”

 

Both applicant and registrant are providing clothing items such as hat and tops.  Neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

For the foregoing reasons consumers and potential consumers would be likely to believe that applicant’s goods and/or services emanate from the same source as those provided by the registrant. Accordingly, registration is refused under Section 2(d) of the Act.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Additional Requirements

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Filing Basis – Section 44(d) Sole Basis with No Intent to Perfect 44(e)

The application specifies Trademark Act Section 44(d) as the sole filing basis, but indicates that applicant does not intend to rely on Section 44(e) as a basis for registration.  See 15 U.S.C. §1126(d), (e).  Applicant is advised that, while Section 44(d) provides a basis for receipt of a priority filing date, it does not provide a basis for publication or registration, which is required for an application.  15 U.S.C. §1126(d); TMEP §1003.03. 

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)       If applicant intends to rely on Section 44(e) as a basis for registration, and applicant’s statement in the application that he or she does not intend to rely on a Section 44(e) basis was inadvertently submitted, then applicant should so specify.  In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016.  A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration is not yet available, applicant should respond to this Office action to indicate that the foreign application is still pending and request suspension of the U.S. application until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

(2)       If applicant does not intend to rely on Section 44(e) as a basis for registration, applicant must establish a basis for registration under Section 1(a) or basis for publication under Section 1(b) by satisfying the relevant requirements.  37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03; see 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).  Please note that applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

Response

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.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Ellen J.G. Perkins/

Ellen J.G. Perkins

Examining Attorney - Law Office 110

U.S. Patent & Trademark Office

571 272-9372

Ellen.Perkins@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.