Offc Action Outgoing

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:  June 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 THAT APPLICANT MUST ADDRESS:

 

• Refusal under Section 2(d) – Likelihood of Confusion
• Disclaimer Required

 

REFUSAL UNDER SECTION 2(d) – 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. 5506643 and 5506644.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applied-for mark is “TGM SHOES” in standard character form for “shoes” in International Class 25.

 

The cited mark in U.S. Registration No. 5506643 is “TGM SKATEBOARDS” in standard character form with “SKATEBOARDS” disclaimed for “retail outlets and On-line retail store services featuring skateboards, longboards and parts and accessories thereof, namely, bushings, bearings, LED lights, rails, bushings trucks, truck parts, decks and wheels, risers and land paddles, sporting apparel and gear, namely, protective gear, namely, safety helmets, knee pads, elbow pads, wrist guards and gloves, sunglasses, caps, belts, shirts, shorts, hoodies, shoes, pants, sandals, socks, shoe laces, sweatshirts, jackets, stickers for skateboards, supply wax for skateboards, canvas tote bags, backpacks, repair tools and tool kits for skateboards, phone cases, cleaners for skateboards, lubricant for skateboards, inline scooter wheels, bracelets and shoe repair glue” in International Class 35.

 

The cited mark in U.S. Registration No. 5506644 is “TGM” in standard character form for “retail outlets and on-line retail store services featuring skateboards, longboards and parts and accessories thereof, namely, bushings, bearings, LED lights, rails, bushings trucks, truck parts, decks and wheels, risers and land paddles, sporting apparel and gear, namely, protective gear, namely, safety helmets, knee pads, elbow pads, wrist guards and gloves, sunglasses, caps, belts, shirts, shorts, hoodies, shoes, pants, sandals, socks, shoe laces, sweatshirts, jackets, stickers for skateboards, supply wax for skateboards, canvas tote bags, backpacks, repair tools and tool kits for skateboards, phone cases, cleaners for skateboards, lubricant for skateboards, inline scooter wheels, bracelets and shoe repair glue” in International Class 35.

 

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 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 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 [and services] and differences in the marks.”); TMEP §1207.01. 

 

Similarity of the Marks

 

The applied-for mark is “TGM SHOES” in standard character form.

 

The cited mark in U.S. Registration No. 5506643 is “TGM SKATEBOARDS” in standard character form with “SKATEBOARDS” disclaimed.

.

 

The cited mark in U.S. Registration No. 5506644 is “TGM” in standard character form.

 

Applicant’s mark is similar in overall commercial impression to registrant’s mark under Section 2(d) of the Trademark Act.  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).

 

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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Applicant’s applied-for mark “TGM SHOES” is sufficiently similar to registrant’s marks for “TGM SKATEBOARDS” and “TGM” to find a likelihood of confusion because they share the same acronym and the only difference in applicant’s mark is the addition of descriptive wording at the end of the mark, and removal of registrant’s descriptive wording from the end of the mark, which does not obviate their similarity.  The acronym “TGM” is the dominant part of each mark, thus the marks are identical in dominant part.  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).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).  In addition, 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).

 

In the present case, the applicant’s identification of goods for “shoes” shows that the wording “SHOES” in the applied-for mark is merely descriptive of or generic for applicant’s goods.  The word “SKATEBOARDS” is disclaimed from the “TGM SKATEBOARDS” mark.  Thus, the words “SHOES” and “SKATEBOARDS” are less significant in terms of affecting the commercial impressions of “TGM SHOES” and “TGM SKATEBOARDS”, and renders the wording “TGM” the more dominant element of the respective marks.

 

Finally, the fact that each of the marks are in standard character format, means that each of the marks may be used in any manner – including in a stylization identical to that of the others.  This goes towards a finding of likelihood of confusion.  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). 

 

As such, considered in their entireties, applicant’s and registrant’s marks share a common acronym and evoke a highly similar overall commercial impression which substantially outweighs the differences in additional descriptive wording at the end of the marks or lack thereof.  Therefore, the marks are confusingly similar under Section 2(d) of the Trademark Act.

 

Relatedness of the Goods and Services

 

Applicant’s goods are closely related to registrant’s services under Section 2(d) of the Trademark Act.  The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The identified goods in the applied-for mark are for “shoes” in International Class 25.

 

The identified services in U.S. Registration No. 5506643 are for “retail outlets and On-line retail store services featuring skateboards, longboards and parts and accessories thereof, namely, bushings, bearings, LED lights, rails, bushings trucks, truck parts, decks and wheels, risers and land paddles, sporting apparel and gear, namely, protective gear, namely, safety helmets, knee pads, elbow pads, wrist guards and gloves, sunglasses, caps, belts, shirts, shorts, hoodies, shoes, pants, sandals, socks, shoe laces, sweatshirts, jackets, stickers for skateboards, supply wax for skateboards, canvas tote bags, backpacks, repair tools and tool kits for skateboards, phone cases, cleaners for skateboards, lubricant for skateboards, inline scooter wheels, bracelets and shoe repair glue” in International Class 35.

 

The identified services in U.S. Registration No. 5506644 are for “retail outlets and on-line retail store services featuring skateboards, longboards and parts and accessories thereof, namely, bushings, bearings, LED lights, rails, bushings trucks, truck parts, decks and wheels, risers and land paddles, sporting apparel and gear, namely, protective gear, namely, safety helmets, knee pads, elbow pads, wrist guards and gloves, sunglasses, caps, belts, shirts, shorts, hoodies, shoes, pants, sandals, socks, shoe laces, sweatshirts, jackets, stickers for skateboards, supply wax for skateboards, canvas tote bags, backpacks, repair tools and tool kits for skateboards, phone cases, cleaners for skateboards, lubricant for skateboards, inline scooter wheels, bracelets and shoe repair glue” in International Class 35.

 

The compared goods and 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 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).

 

Here, applicant’s and registrant’s identified goods and services clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record.  Applicant’s goods are shoes, and registrant’s services in each of its marks is for retail of shoes.  Thus, applicant’s goods are broad enough to encompass the type of shoes provided in registrant’s retail services.  Evidence attached herein from the following sources demonstrates that the same source commonly offers, produces, manufactures, or sells shoes and provides retail services for shoes:

 

-          DC, offers, produces, manufactures, or sells shoes and provides retail services for shoes. http://www.dcshoes.com/

-          Nike, offers, produces, manufactures, or sells shoes and provides retail services for shoes. http://www.nike.com/

-          Vans, offers, produces, manufactures, or sells shoes and provides retail services for shoes. http://www.vans.com/

 

The attached Internet evidence, consisting of third party use in the retail industry, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and services and markets the goods and services under the same mark, the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and/or the goods and services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

Based on the analysis above, applicant’s goods are closely related to registrant’s services.

 

Section 2(d) Refusal Summary

 

In total, the parties’ marks are confusingly similar in overall commercial impression because they share the same acronym and the only difference in applicant’s mark is the addition of descriptive wording at the end of the mark, and removal of registrant’s descriptive wording from the end of the mark, which does not obviate their similarity.  Applicant’s goods and registrant’s services are commercially related and are available in the same trade channels as shown by the evidence.  Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods and services.  Accordingly, registration must be refused under Section 2(d) 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.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “SHOES” because it is merely descriptive of a quality or characteristic of applicant’s goods.  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). 

 

The identified goods are shoes, thus the word “SHOES” appearing in the mark is generic for the type of goods in the application.  Thus, the wording is highly descriptive and generic of applicant’s goods and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SHOES” 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 applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

LEGAL ASSISTANCE ADVISORY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and/or requirement in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

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.    

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 13, 2020 for

U.S. Trademark Application Serial No. 88843381

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from June 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”