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:  November 16, 2020

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

·         SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

·         PRIOR FILED APPLICATIONS

·         IDENTIFICATION OF GOODS INDEFINITE

 

SECTION 2(d) REFUSAL – 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. 5163772 with respect to International Class 014 and 3409360 with respect to International Class 018.  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 and/or 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/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 has applied to register the mark “THE GOOD ALMA” in standard characters in International Class 014 for “Jewelry, imitation jewelry, and watches,” in International Class 018 for “Leather and imitation leather; trunks being luggage; suitcases; traveling bags; sports bags; handbags; backpacks; beach bags, school bags, satchels; leather shopping bags; traveling trunks; travel bags for clothing and shoes; attaché cases; document cases and briefcases made of leather; purses; wallets; business card cases; credit card holders; coin purses not of precious metal; leather key cases; boxes of leather and imitation leather; leather traveling bag sets; boxes intended for toiletry articles, namely, vanity cases sold empty; pouches of leather, clutch bags; evening purses; parasols; umbrellas; clothing for animals; bags for carrying animals,” and in International Class 025 for “Clothing, namely, tank tops, jeans, wraps, socks, shoes, flip flops, sandals, headbands, hats, yoga pants, skirts, lingerie, underwear, sportswear, loungewear, beachwear, swimwear, sleepwear, shirts, blouses, skirts, dresses, pants, jumpsuits, jackets, sweaters, shawls, body shapers, bodysuits, boleros, brassiers, bustiers, camisoles, capes, capris, caps, chemises, wrap-arounds, coats, culottes, gowns, pullovers, shorts, footwear, shoes, slippers, garter belts, girdles, gloves, gym suits, hoods, hosiery, housecoats, jerseys, jogging outfits, jumpers, kerchiefs, kimonos, knickers, layettes, leg shapers, leggings, muu muus, neckbands, negligees, bralettes, sports bras, bandeaus, night gowns, night shirts, nightcaps, night dresses, pajamas, pantaloons, pantsuits, robes, sarongs, sashes, scarves, shifts, shrugs, sleep masks, slips, stoles, suits, sweatpants, sweat shirts, sweat suits, teddies, tops, trousers, tunics, twin sets, t-shirts, vests, warm up suits, and belts.”

 

Registration is refused due to a likelihood of confusion with the following marks:

 

1)      “ALMA SANA” in standard characters in International Class 014 for “Jewelry, namely, bracelets for the wrist and ankle of a child, that also provides notification of a pending medically related task, namely, as a vaccination reminder for the caregiver of the child and the healthcare provider of the child.”

2)      “ALMA” in standard characters in International Class 018 for “Articles made of leather or of imitation leather, namely handbags.”

 

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).

 

Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

In the present case, applicant has applied for the mark “THE GOOD ALMA” in standard characters and registrants have applied for the marks “ALMA SANA,” and “ALMA” in standard characters.

 

With respect to the registered mark “ALMA SANA” the identical term “ALMA” is present in each of applicant’s and registrant’s marks, with the additional wording in each mark doing little to obviate the similar impression left by the identical wording.  As such, the marks are confusingly similar.

 

With respect to the registered mark “ALMA,” the entirety of registrant’s mark is encompassed by applicant’s mark.  The additional wording in applicant’s mark does little to obviate the similar impression left by the identical wording present in both marks, such that the marks are confusingly similar.

 

Comparison 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).

 

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).

 

Applicant has identified “jewelry” as goods it provides in International Class 014, and “handbags” as goods it provides in International Class 018.  Registrant with the mark “ALMA SANA” has identified “Jewelry, namely, bracelets for the wrist and ankle of a child that also provides notification of a pending medically related task, namely, as a vaccination reminder for the caregiver of the child and the healthcare provider of the child” in International Class 014 as goods it provides.  Registrant with the mark “ALMA” has identified “Articles made of leather or of imitation leather, namely, handbags” as goods it provides in International Class 018.

 

With respect to the registered mark “ALMA,” when analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods and/or services in the application and registration, namely, handbags, are identical.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

With respect to the registered mark “ALMA SANA,” 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, the application uses broad wording to describe “jewelry,” which presumably encompasses all goods of the type described, including registrant’s more narrow “Jewelry, namely, bracelets for the wrist and ankle of a child, that also provides notification of a pending medically related task, namely, as a vaccination reminder for the caregiver of the child and the healthcare provider of the child.”  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 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.

 

 

Conclusion

 

In the present case applicant’s and registrant’s marks at minimum share identical language, applicant’s goods are either identical or are encompassing of registrant’s goods, and the applicant’s and registrant’s goods are provided through the same channels of trade.  Therefore applicant’s mark is refused under Section 2(d) of the Trademark Act.

 

Applicant should also note the following potential refusals.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87321468 and 88737860 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 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.

 

Applicant should also note the following requirements.

 

IDENTIFICATION OF GOODS INDEFINITE

 

International Class 025

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 025 for “skirts, caps, shoes.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “sportswear, bandeaus, slips, teddies” in the identification of goods is indefinite and must be clarified because applicant must provide greater specificity as to the articles of clothing being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the wording as provided in the amended identification below.

 

Applicant may adopt the following identification of goods, with the amended wording in bold, if accurate:

 

CLASS 014

 

Jewelry, imitation jewelry, and watches

 

CLASS 018

 

Leather and imitation leather; trunks being luggage; suitcases; traveling bags; sports bags; handbags; backpacks; beach bags, school bags, satchels; leather shopping bags; traveling trunks; travel bags for clothing and shoes; attaché cases; document cases and briefcases made of leather; purses; wallets; business card cases; credit card holders; coin purses not of precious metal; leather key cases; boxes of leather and imitation leather; leather traveling bag sets; boxes intended for toiletry articles, namely, vanity cases sold empty; pouches of leather, clutch bags; evening purses; parasols; umbrellas; clothing for animals; bags for carrying animals

 

CLASS 025

 

Clothing, namely, tank tops, jeans, wraps, socks, shoes, flip flops, sandals, headbands, hats, yoga pants, skirts, lingerie, underwear, loungewear, beachwear, swimwear, sleepwear, shirts, blouses, dresses, pants, jumpsuits, jackets, sweaters, shawls, body shapers, bodysuits, boleros, brassiers, bustiers, camisoles, capes, capris, caps being headwear, chemises, wrap-arounds, coats, culottes, gowns, pullovers, shorts, footwear, slippers, garter belts, girdles, gloves, gym suits, hoods, hosiery, housecoats, jerseys, jogging outfits, jumpers, kerchiefs, kimonos, knickers, layettes, leg shapers, leggings, muu muus, neckbands, negligees, bralettes, sports bras, bandeau bras, night gowns, night shirts, nightcaps, night dresses, pajamas, pantaloons, pantsuits, robes, sarongs, sashes, scarves, shifts, shrugs, sleep masks, slips being underclothing, stoles, suits, sweatpants, sweat shirts, sweat suits, teddies being underclothing, tops, trousers, tunics, twin sets, t-shirts, vests, warm up suits, and belts; clothing, namely, sportswear in the nature of tops and and bottoms

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Comments

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

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 refusals and/or requirements 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.    

 

 

Goran, Bradley

/Bradley Goran/

Examining Attorney

USPTO

Law Office 107

(571) 270-7482

bradley.goran@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 November 16, 2020 for

U.S. Trademark Application Serial No. 90079187

 

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. 

 

 

Goran, Bradley

/Bradley Goran/

Examining Attorney

USPTO

Law Office 107

(571) 270-7482

bradley.goran@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 November 16, 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.”