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:  December 23, 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

 

--Section 2(d) Refusal Based on Likelihood of Confusion

--Advisory:  Prior Pending Applications

--Identification and Classification of Goods

 

Section 2(d) Refusal Based on 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. 5829225 (VARSITY GIRL); Reg. No. 5156409 (VARSITY LIFE); Reg. No. 4451703 (VARSITY ALL STAR FASHION); Reg. No. 4110341 (V VARSITY SHOP); Reg. No. 3782740 (VARSITY); Reg. No. 3928856 (VARSITY); Reg. No. 2155823 (VARSITY GIRL); Reg. No. 2526564 (VARSITY); Reg. No.  2357303 (V VARSITY); Reg. No. 2082554 (VARSITY); Reg. No. 2293083 (VARSITY SPORT); Reg. No. 1812198 (VARSITY); Reg. No. 0879543: (VARSITY).  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. 

 

In a likelihood of confusion determination, 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).

 

Comparison of the Marks

 

In the present case, applicant’s mark is “VARSITY” and registrant’s marks are:

 

U.S. Registration No. 5829225 (VARSITY GIRL); Reg. No. 5156409 (VARSITY LIFE); Reg. No. 4451703 (VARSITY ALL STAR FASHION); Reg. No. 4110341 (V VARSITY SHOP); Reg. No. 3782740 (VARSITY); Reg. No. 3928856 (VARSITY); Reg. No. 2155823 (VARSITY GIRL); Reg. No. 2526564 (VARSITY); Reg. No.  2357303 (V VARSITY); Reg. No. 2082554 (VARSITY); Reg. No. 2293083 (VARSITY SPORT); Reg. No. 1812198 (VARSITY); Reg. No. 0879543: (VARSITY).

 

Each of the marks begins with the word “VARSITY”.  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”).  The additional descriptive wording in registrant’s marks does not alter the commercial impression of the marks.

 

Varsity is the dominant word in each of these marks. Therefore, the marks are confusingly similar. 

 

Relatedness of the Goods and/or Services

 

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).

 

Applicant’s goods are: men's and women's designer clothing. this will include hats, shirts, jumpers, sweatshirts, sweatpants, tops, trousers, undergarments, pajamas, shorts, socks, sneakers, shoes, sandals, jewelry, jackets, coats, sweaters, towels, loungewear, sportswear and masks. accessories include duffle bags, backpacks, messenger and shoulder bags, purses, wallets, tote bags, phone cases and laptop cases

 

And

 

Registrant’s goods and/or services are:

 

Reg. No. 5829225 (VARSITY GIRL):  athletic shirts, athletic shorts, shorts, shirts, t-shirts

 

Reg. No. 5156409 (VARSITY LIFE): Athletic shirts, athletic shorts, athletic tops, bodysuits, jackets, jerseys, leotards, shorts, shirts, sweatpants, sweatshirts, T-shirts, unitards, body suits and warm-up suits; uniforms for cheerleaders, drill teams, pom pom squads, pep squads; footwear, namely, athletic shoes, cheerleader shoes, dance shoes, sneakers, flip-flops; gloves, vests, tights, midriffs, caps, hats, visors, sports bras, socks, sleepwear, night shirts, loungewear.

Reg. No. 4451703 (VARSITY ALL STAR FASHION): men and women's cheerleader and dance team clothing, namely, skirts, sweat suits, tops, pants.

 

Reg. No. 4110341 (V VARSITY SHOP):  on-line retail store services featuring DVDs, compact discs, jewelry, athletic shirts, athletic shorts, athletic tops, bodysuits, dresses, hats, jackets, jerseys, leotards, pants, shirts, shorts, skirts, sweaters, sweatpants, sweatshirts, t-shirts, unitards and warm-up suits, sports bags, carry-all bags, shoulder bags, backpacks, knapsacks, duffle bags, all-purpose sporting bags, all-purpose carrying bags, tote bags, umbrellas, shoe bags, messenger bags, travel cases, key holders, overnight bags, pom poms, uniforms for cheerleaders, drill teams, pom pom squads, pep squads, footwear, namely, athletic shoes, cheerleader shoes, dance shoes, gloves, vests, caps, sports bras, socks, loungewear

 

Reg. No. 3782740 (VARSITY): Athletic shirts, athletic shorts, athletic tops, bodysuits, dresses, hats, jackets, jerseys, jumpers, leotards, pants, skirts, sweaters, sweatpants, sweatshirts, t-shirts, unitards and warm-up suits sold to colleges, high schools and school-affiliated teams, clubs, groups and individuals by direct sales through sales representatives or employees of applicant, through mail order catalogue services or through campus bookstores or other retail outlets located at colleges and high schools; uniforms for cheerleaders, drill teams, pom pon squads, pep squads, mascots, bands and booster clubs; footwear, namely, athletic shoes, cheerleader shoes, dance shoes, slippers, flip-flops and sandals

 

Reg. No. 3928856 (VARSITY): FOOTWEAR, NAMELY, CHEERLEADER SHOES, DANCE SHOES, SLIPPERS, FLIP-FLOPS AND SANDALS; ATHLETIC SHOES

 

Reg. No. 2155823 (VARSITY GIRL): clothing for girls, namely, woven shirts, knitted shirts, jogging suits and shorts.

 

Reg. No. 2526564 (VARSITY): Athletic shirts, athletic shorts, athletic tops, body suits, dresses, hats, jackets, jerseys, jumpers, leotards, pants, skirts, sweaters, sweat pants, sweat shirts, T-shirts, unitards, and warm-up suits sold to colleges, high schools and school-affiliated teams, clubs, groups and individuals by direct sales through sales representatives or employees of applicant, through mail order catalog services or through campus book stores or other retail outlets located at colleges and high schools; uniforms for cheerleaders, drill teams, pom pon squads, pep squads, mascots, bands and booster clubs

 

Reg. No.  2357303 (V VARSITY): cheerleader uniforms, drill team uniforms and pom pon squad uniforms

 

Reg. No. 2082554 (VARSITY): mens T-shirts; briefs; athletic shirts; undergarments; loungewear sold through retail outlets

 

Reg. No. 2293083 (VARSITY SPORT): athletic wear, namely, sports shirts, sports shorts, warm-up suits,  sweaters,  sweatshirts, T-shirts, athletic shorts, sweatpants, tights

 

Reg. No. 1812198 (VARSITY): men's and women's sleepwear, underwear, night shirts, loungewear and boxer shorts

 

Reg. No. 0879543: (VARSITY):  PAJAMA AND ROBE SETS.

 

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).

 

Both and applicant and registrant provide clothing.

 

Neither the application nor the registration contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

Accordingly, registration must be refused based on likelihood of confusion 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.

 

 

Advisory:  Prior Pending Applications

 

In addition, marks in prior-filed pending application may present a bar to registration of applicant’s mark. The filing dates of pending U.S. Application Serial Nos. 88348313, 88611306, 88501703, 88341522, 86316142, 86983766, and 86945144 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.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

 

Identification and Classification of Goods

 

The wording “sportswear; masks” in the identification of goods is unclear and requires further clarification.  Applicant must indicate with more particularity the nature or purpose of the goods.  In addition, the wording “this will include” and “include” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Additionally, applicant has classified the following goods in International Class 025:  “towels; duffle bags, backpacks, messenger and shoulder bags, purses, wallets, tote bags, phone cases and laptop cases”.  However, the proper classification for each item is as follows:

 

Class 024:  towels

Class 018:  duffle bags, backpacks, messenger and shoulder bags, purses, wallets, tote bags,

Class 009:  phone cases and laptop cases  

 

Additionally, applicant has provided the application fee for only 1 international class(es).  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86(a).

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate: 

 

Class 025:  men's and women's designer clothing, namely, hats, shirts, jumpers, sweatshirts, sweatpants, tops, trousers, undergarments, pajamas, shorts, socks, sneakers, shoes, sandals, jewelry, jackets, coats, sweaters, loungewear, sportswear, namely, ___ {specify the items of sportswear, e.g. shorts, socks, etc.} and knit masks being headwear.

 

And/or

 

Class 024:  towels

 

And/or

 

Class 018:  duffle bags, backpacks, messenger and shoulder bags, purses, wallets, tote bags

 

And/or

 

Class 010:  Fashion masks being sanitary masks for protection against viral infection

 

And/or

 

Class 009: phone cases and laptop cases

 

 

Guidelines to Amending the Identification of Goods and/or Services

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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

 

Multiple Class Applications

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

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

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/Kathleen Lorenzo/

Kathleen Lorenzo

Trademark Examining Attorney

Law Office 109

Kathleen.Lorenzo@uspto.gov

571-272-5883

 

 

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 December 23, 2020 for

U.S. Trademark Application Serial No. 90130178

 

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. 

 

 

/Kathleen Lorenzo/

Kathleen Lorenzo

Trademark Examining Attorney

Law Office 109

Kathleen.Lorenzo@uspto.gov

571-272-5883

 

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 December 23, 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.”