To: | Haiwei Shi (jmlawchina@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90024270 - MY HERO ACADEMIA - N/A |
Sent: | October 14, 2020 02:34:48 PM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90024270
Mark: MY HERO ACADEMIA
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Correspondence Address: |
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Applicant: Haiwei Shi
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: October 14, 2020
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
1. Likelihood of Confusion
2. Possible Likelihood of Confusion
SECTION 2(d) REFUSAL – 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. 3592939. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Applicant seeks to register “MY HERO ACADEMIA” for use on “coats; dresses; footwear; gloves; hats; pants; shirts; skirts; socks; sweaters; underwear; children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; clothing, namely, shirts, pants and skirts; tee-shirts”
The registered mark is “MY HERO” for, among other things, “apparel, namely, t-shirts.”
Applicant’s mark closely resembles the registrant’s mark because it completely incorporates the registrant’s mark, which is distinctive per se. The fact that applicant’s mark includes the entirety of another’s mark may lead the ordinary consumer to perceive that the source of the mark “MY HERO ACADEMIA” is the same as the source for “MY HERO” per se.
Furthermore, applicant’s and the registrant’s goods are closely related, where not identical, because they are all articles of clothing including t-shirts.
Applicant’s mark closely resembles the registrant’s mark and the goods identified by these marks are closely related. When used on its identified goods, applicant’s mark may cause confusion or mistake to the ordinary consumers as to the source of such goods in relation to the registrant’s mark and its goods. Based on the above discussion, the examining attorney has determined to refuse registration of applicant’s mark.
POSSIBLE LIKELIHOOD OF CONFUSION
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.
RESPONSE TO OFFICE ACTION
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.
/Dawn Han/
Examining Attorney
Law Office 107
(571) 272-0399
dawn.han@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.