To: | VESSI FOOTWEAR LTD. (fang@fangchenlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90011882 - VESSI - N/A |
Sent: | July 27, 2021 04:43:08 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90011882
Mark: VESSI
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Correspondence Address:
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Applicant: VESSI FOOTWEAR LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 27, 2021
This Office action is in response to applicant’s communication filed on April 16, 2021.
In a previous Office action dated August 26, 2020, the trademark examining attorney refused registration of the applied-for mark based on Section 2(d) of the Trademark Act, for a likelihood of confusion with a registered mark. In addition, applicant was required to amend the identification of services.
Based on applicant’s response, the trademark examining attorney notes that the requirement to amend the identification of services has been satisfied. See TMEP §§713.02, 714.04.
However, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark “VESSI” (stylized) is, as amended, for “On-line retail store services featuring footwear; Providing a retail store website featuring online sale of footwear; On-line wholesale and retail store services featuring footwear; Providing a wholesale store website featuring online sale of footwear” in Class 35.
The first registered mark “VESI” (in typeset letters) is for “clothing, namely sweaters and sweatshirts” in Class 25.
The second registered mark “VESI” (stylized with design) is for “Knit and woven clothing, namely, shirts, sweaters, sweatshirts, and pants; outerwear, namely, jackets; and hats” in CLass 25.
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 and Registrant’s Marks are Confusingly Similar
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).
As explained previously, the applied-for mark is “VESSI” and the only wording in the registered marks is “VESI”. The applied-for mark and the first registered mark sound identical, and appear almost identical with only one letter difference. The second registered mark also has a design. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). The similarity created by the nearly identical wording in the marks significantly outweighs the minor differences in the stylization, spelling, or design.
Applicant contends that the additional letter, creates a differing connotation and commercial impression, and provides examples of words changing by adding an additional letter. However, here, the additional letter is simply a repeat of an already existing letter, and does nothing to change the meaning or impression of the term. Applicant also alleges that the examining attorney has improperly dissected the wording, by weighing the similar portion over the differences. However, there is nothing improper with weighing particular portions of the wording as having more dominance, as in the case here. Finally, applicant references previous coexisting registered marks, alleging that such coexisting marks have more similarities than the marks at issue here. However, prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).
For these reasons, the examining attorney maintains that the marks are confusingly similar for purposes of likelihood of confusion.
Applicant’s and Registrant’s Goods and Services are Related
The goods and/or 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).
In this case, applicant’s services are in the nature of online retail and wholesale services featuring footwear. Registrant’s goods are various items of clothing.
Applicant contends that because the goods are in different classes they are not related. However, the previously attached representative evidence from Adidas, Calvin Klein, and DKNY, indicates that the same entity commonly provides applicant’s services and registrant’s goods and markets them under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods and services are complementary in terms of purpose or function. This is further confirmed by the attached additional evidence from Express, L.L.Bean, J.C. Crew, H&M, and Banana Republic. Thus, the examining attorney maintains that 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).
Because applicant’s and registrant’s marks are confusingly similar and the associated goods/services are related, there is a likelihood of confusion, and the applied-for mark is therefore refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
PROPER RESPONSE TO THIS FINAL ACTION
Response guidelines. For this application to proceed, applicant must still 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Jonathon Schlegelmilch
/Jonathon Schlegelmilch/
Examining Attorney
Law Office 108
571-272-7758
jonathon.schlegelmilch@uspto.gov
RESPONSE GUIDANCE