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:  October 20, 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:

• REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
• POTENTIAL REFUSAL – PRIOR-PENDING APPLICATION

 

I.                    REFUSAL – 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. 6015987, 5354539, 6028027, 4825339, 5361844, 4823171 and 4262039.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 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.  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 has applied for registration on the Principal Register of the mark MINT in standard characters for use in connection with goods identified as “Pants; Dance pants; Women's tops, namely, camis; Yoga pants; Yoga tops” in International Class 025.  However, the following registrants have acquired registration on the Principal Register of the following marks for use in connection with the following goods.

 

MINT – U.S. Registration No. 6028027 - Class 025: “Bottoms as clothing; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Clothing for athletic use, namely, padded shorts; Clothing, namely, base layers; Clothing, namely, khakis; Clothing, namely, thobes; Clothing, namely, wrap-arounds; Headbands; Headwear for adults; Hoodies; Jackets for adults; Pants for adults; Shifts as clothing; Shirts for adults; Short sets; Shorts for adults; Shoulder wraps for clothing; Sweaters for adults; Sweatpants for adults; Sweatshirts for adults; T-shirts for adults; Tops as clothing; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Trunks being clothing; Wearable garments and clothing, namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses.”

 

MENT APPAREL – U.S. Registration No. 5354539 – Class 025:  “Clothing and accessories, namely, t-shirts, tank tops, and sweatshirts.”

 

BROOKLYN MINT – U.S. Registration No. 6015987 – Class 025:  “Crew neck sweaters; Headwear; Hooded pullovers; Hooded sweat shirts; Short-sleeved or long-sleeved t-shirts; Sweaters; T-shirts.”

 

MINT SWIM – U.S. Registration No. 4825339 – Class 025:  “Bikinis; Swim suits; Swim wear.”

 

MINT. BY JESSICA SNYDER – U.S. Registration No. 4823171 – Class 025:  “Women's clothing, namely, tee shirts, dresses, pants, hooded sweatshirts, shorts, tank tops, blouses, jackets, scarves.”

 

THE MINT GIRL – U.S. Registration No. 4262039 – Class 025:  “Clothing, namely, jeans, pants, shirts, tee-shirts, jackets, vests, coats, rainwear, sweatshirts, blouses, shorts, overalls, sleepwear, loungewear, swimwear, gloves, socks, belts, ties, anoraks, khaki pants, trousers, fleece tops, robes, pajamas and nightgowns, undergarments, boxer shorts, gym shorts, bodysuits, tank tops, sweatshirts, sweat pants, bathing suits, swim trunks, caps, hats and footwear.”

 

MINT VELVET – U.S. Registration No. 5361844 – Class 025:  “Clothing, namely, jackets, jumpers, cardigans, trousers, jeans, shorts, scarves, shawls, wraps, hats, gloves, blazers, blouses, caftans, capes, capri pants, coats, dresses, jump suits, knit bottoms, knit dresses, knit jackets, knit shirts, knit skirts, knit tops, leggings, overcoats, pants, shirts, skirts, sport coats, suits, sweaters, sweatshirts, swimwear; tank-tops, t-shirts, vests; footwear, headgear, namely, hats and caps; belts.”

 

1.                  Similarity 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).

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the case of U.S. Registration No. 6028027, applicant’s mark is MINT and registrant’s mark is MINT.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

Therefore, the marks are confusingly similar. 

 

In the case of MINT VELVET, THE MINT GIRL, MINT. BY JESSICA SNYDER, MINT SWIM and BROOKLYN MINT, the applicant’s mark is completely contained within the marks, such that the applicant’s mark appears as though it is the registrants’ marks with the remaining matter deleted.  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. 

 

Further, the dominant feature of the applicant’s mark MINT and the dominant feature of the registrants’ marks MINT VELVET, THE MINT GIRL, MINT. BY JESSICA SNYDER, MINT SWIM and BROOKLYN MINT. 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 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).  The disclaimed wording “BROOKLYN,” “GIRL,” “SWIM” and “VELVET” is descriptive or geographically descriptive of the registrants’ goods, thereby rendering the wording “MINT” to be the dominant feature of the marks.  Further, due to the descriptive nature of this wording, such additional wording does not change the commercial impression shared between the registrants’ marks and the applicant’s mark. 

 

Likewise, the wording “MINT” is the first word in the registrant’s mark MINT. BY JESSICA SNYDER.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Furthermore, the wording “BY JESSICA SNYDER” appears to be a reference to the house mark, whereas the wording “MINT” is the product line name.  This further makes it likely that consumers might be confused as to the source of the applicant’s mark. 

 

Finally, the wording “MENT” in the registrant’s mark MENT APPAREL is a phonetic equivalent of the applicant’s mark MINT.  The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).  The wording “APPAREL” is descriptive of the registrant’s goods, thereby rendering the wording “MENT” to be the most dominant feature.  When referred to vocally, such as in radio or podcast advertisements or through consumer word-of-mouth discussions, the wording “MINT” and “MENT” may be confused, even when one is coupled with the wording “APPAREL.”  This is because both marks are for apparel, and consumers may be confused as to which mark is being referred to. 

 

As such, the marks are confusingly similar for purposes of likelihood of confusion.

 

2.                  Similarity of the Goods

 

The goods 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).

 

Determining likelihood of confusion is based on the description of the goods 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, the registrations use broad wording to describe “Bottoms as clothing,” “Pants for adults” and “Tops as clothing” for MINT, Women’s clothing, namely,… pants” for MINT. BY JESSICA SNYDER, “Clothing, namely, … pants” for MINT VELVET and “Pants” for THE MINT GIRL, which presumably encompasses all goods of the type described, including applicant’s more narrow “Pants; Dance pants; Women's tops, namely, camis; Yoga pants; Yoga tops.”  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).  Moreover, the broad wording “Pants” in the application presumably encompasses all goods of the type described, including registrants’ more narrow “Clothing for athletic use, namely, padded pants; … Clothing, namely, khakis; … Pants for adults” for MINT, “Women’s clothing, namely,… pants” for MINT. BY JESSICA SNYDER, “jeans, … khaki pants, trousers” for THE MINT GIRL, and “Clothing, namely, … trousers, jeans, …capri pants, …” for MINT VELVET. 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 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 registrants’ goods are related.

 

Moreover, the attached evidence from Reebok.com, Nike.com, and Adidas.com shows that the often the same providers of the applicant’s goods identified as general sport and athletic clothing such as “Pants; Dance pants; Women's tops, namely, camis; Yoga pants; Yoga tops” often also provide the goods of the registrants’ identified as general clothing or swimwear.  Thus, applicant’s and registrants’ goods 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).

 

Conclusion

 

The applicant’s mark and the registrant’s mark are similar and the goods of the applicant are related to the goods of the registrant; therefore, it is likely that consumers would be confused, mistaken, or deceived as to the source of the goods of the applicant.  As such, the applicant’s mark creates a likelihood of confusion with the registrant’s mark, and registration on the Principal Register is refused, pursuant to 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.

 

The applicant should also take note of the additional, potential ground for refusal below.

 

II.                 POTENTIAL REFUSAL – PRIOR-PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88585225 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

Upon receipt of applicant’s response to the above-outlined refusal, action on this application will be suspended pending the disposition of U.S. Application Serial No. 88585225.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

ASSISTANCE

 

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 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. 

 

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

 

 

/Daniel Travis Bice/

D. Travis Bice

Trademark Examining Attorney

Law Office 128

Telephone:  (571) 272-3385

Email: Daniel.Bice@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 October 20, 2020 for

U.S. Trademark Application Serial No. 90041521

 

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. 

 

 

/Daniel Travis Bice/

D. Travis Bice

Trademark Examining Attorney

Law Office 128

Telephone:  (571) 272-3385

Email: Daniel.Bice@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 October 20, 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.”