United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88799408
Mark: SHERO
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Correspondence Address: |
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Applicant: SHERO USA, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 09, 2020
Applicant must address issues shown below. On April 9, 2020, the examining attorney and May Lee discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Applicant’s mark is “SHERO” for in relevant part, Class 18 “Backpacks; Purses and wallets; Sports bags” and Class 25 “Aprons; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bottoms as clothing; Shoes; Tops as clothing; Undergarments; Underwear; Women's clothing, namely, shirts, dresses, skirts, blouses; Women's underwear; Headwear, namely, hats and caps; Headbands”.
The registered marks are:
Reg. No. 3710795 “SHERO (SPECIAL-HEART-EXCEEDING-REMARKABLE-OPPOSITION)” for “shirts, T-shirts”
Reg. No. 5818467 “SHERO COMICS” for among other things, “Hats; Jackets; Pants; Swimsuits; Graphic T-shirts; T-shirts; Tank tops; Tee shirts”
Reg. No. 4955864 “YOGASHERO” for among other things, “Bags specially adapted to carry yoga equipment”.
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).
Applying the above analysis, the marks are substantially similar. The recognizable and dominant portion of applicant's mark is the word “SHERO” which is identical to the recognizable and dominant portion of the registered marks. In the instant case, it is appropriate to give more weight to the “SHERO” portion of the marks in Reg. Nos. 5818467 and 4955864 because of the descriptive nature of the wording “COMICS” and “YOGA” when used in connection with a comic production company and a yoga equipment provider. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Further, while the mark in Reg. No. 3710795 contains additional wording at the bottom, the examining attorney notes that the term “SHERO” is presented in much larger font and dominates the overall appearance of the 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.
As such, viewed as a whole, applicant's mark is substantially similar in sound, appearance, connotation and commercial impression to the registered marks.
Comparison of the Goods
In this case, the goods are in part identical or legally identical and otherwise closely related. Determining likelihood of confusion is based on the description of the goods and/or services 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)).
In this case, Reg. No. 3710795 use(s) broad wording to describe “shirts” and “t-shirts”, which presumably encompasses all goods of the type described, including applicant’s more narrow “Athletic apparel, namely, shirts, Women's clothing, namely, shirts, blouses” and Reg. No. 5818467 uses broad wording to describe “Hats; Jackets; Pants; Graphic T-shirts; T-shirts; Tank tops; Tee shirts” which encompasses applicant’s more narrow “Athletic apparel, namely, shirts, pants, jackets, hats and caps, Women's clothing, namely, shirts, blouses; Headwear, namely, hats and caps”. Further, applicant’s broadly worded “bottoms as clothing” and “tops as clothing” encompasses the shirts and t-shirts in Reg. No. 3710795 and the “Jackets; Pants; Graphic T-shirts; T-shirts; Tank tops; Tee shirts” in Reg. No. 5818467. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services 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)). Thus, applicant’s and registrant’s goods and/or services are related.
Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Applicant’s various clothing items such as shoes, underwear, undergarments, etc., are also closely related to the types of clothing in Reg. Nos. 3710795 and 5818467 because all types of clothing commonly emanate from a single source and travel in the same channels of trade. See the attached website evidence from http://www.macys.com and http://shop.nordstrom.com/ indicating that all types of clothing for men and women including shirts, pants, tops, underwear, swimwear, headwear, footwear, etc. are encountered by consumers in the same types of retail trade channels.
In addition, applicant’s Class 18 “Backpacks; Purses and wallets; Sports bags” are closely related to the “Bags specially adapted to carry yoga equipment” in Reg. No. 4955864 because these types of bags are sold in the same trade channels under the same brand names. See the attached website evidence from http://www.echopurse.com, and http://shop.lululemon.com/ indicating that yoga bags, backpacks, wallets and sport bags are sold to the same consumer groups in the same channels of trade.
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).
Thus since the marks are substantially similar and the goods are in part identical or legally identical and otherwise closely related, there is a likelihood of confusion and registration must be refused.
REFUSAL LIMITED TO SPECIFIC CLASSES
(1) Deleting the classes to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for such classes, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
PRIOR PENDING APPLICATIONS
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 marks in the referenced applications. 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.
Please note that the prior pending applications are only a potential bar to registration in Classes 18 and 25.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
IDENTIFICATION OF GOODS
The identification of goods in Classes 21, 25 and 26 is amended to read as follows:
Household utensils, namely, Cutting Board, Oven Mitts, Colander, Cooking Spoons, graters, kitchen tongs, sieves, skimmers, spatulas, strainers, turners, splatter screens, Mixing Bowls, Whisk, Rolling Pin; Pill boxes for personal use
Class 25
Aprons; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bottoms as clothing; Shoes; Tops as clothing; Undergarments; Underwear; Women's clothing, namely, shirts, dresses, skirts, blouses; Women's underwear; Headwear, namely, hats and caps; Headbands
Class 26
Hair accessories, namely, twisters, hair ties, hair rings in the nature of hair bands, hair clips, hair scrunchies, hair bows, hair bands
See TMEP §§1402.01, 1402.01(e).
RESPONSE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Blake Lovelace/
James Blake Lovelace
Examining Attorney
Law Office 119
(571) 270-1533
james.lovelace@uspto.gov
RESPONSE GUIDANCE