United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90242285
Mark: VERSE
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Correspondence Address: ONE EMBARCADERO CENTER, SUITE 350
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Applicant: Shanghai Yangfan Industrial Company Limi ETC.
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Reference/Docket No. 2145.03
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: March 11, 2021
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 TO WHICH APPLICANT MUST RESPOND:
SECTION 2(d) PARTIAL 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. 5488717, 5515497, 5769515, and 5881844. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant's mark is VERSE (standard characters) for, in most relevant part, “Backpacks, sport packs, duffel bags and sports bags” in International Class 018 and “Sleeping bags” in International Class 024.
The cited marks are as follows:
VERSSE (stylized characters) (Reg. No. 5488717) for “Animal skins; travelling trunks; garment bags for travel; umbrellas; travelling bags; handbags; attaché cases; pocket wallets; school satchels” in International Class 018;
VERSA (standard characters) (Reg. No. 5515497) for “Blankets; Blankets for indoor use; Blankets for outdoor use; Sleeping bags” in International Class 024;
VERSE (standard characters) (Reg. No. 5769515) for “Ladies' clothing, namely, dresses, skirts, jumpsuits, cardigans, blouses, coats, shirts, ponchos, scarfs, jackets, pants, sweaters, and tops” in International Class 025;
VERSSE (stylized characters plus design) (Reg. No. 5881844) for “School satchels” in International Class 018.
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 and differences in the marks.”); TMEP §1207.01.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
For Registration Nos. 5488717 and 5881844, Applicant’s mark is “VERSE” and Registrant’s marks are “VERSSE”. These marks are highly similar in appearance and sound and convey the same overall commercial impression. The additional letter “S” in Registrant’s marks fails to obviate this refusal. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Further, the stylization and design in Registrant’s marks does not detract from the confusing similarity in this case because Applicant’s mark is in standard character form. A mark in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Regarding Registration No. 5515497, Applicant’s mark is “VERSE” and Registrant’s mark is “VERSA”. The marks are highly similar in appearance and sound convey the same overall commercial impression. In particular, the marks are identical with respect to the first four letters “VERS” and only differ in their last letter. As stated above, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
As to Registration No. 5769515, Applicant’s mark is “VERSE” and Registrant’s mark is “VERSE”. 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.
For the reasons set forth more fully above, the compared marks are confusingly similar.
Comparison of the Goods
Moreover, to the extent the evidence may not address all of the items in Applicant’s identification, relatedness does not have to be established for every product. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness will be established for many of the identified goods, which is enough to show a likelihood of confusion.
Regarding Registration No. 5515497, Applicant’s goods and Registrant’s goods are identical with respect to “sleeping bags”. Thus, the nature of the goods is similar. 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)).
As to Registration No. 5769515, the parties’ goods are related because consumers are accustomed to seeing the parties’ respective goods offered from the same source under the same mark. Specifically, the attached Internet evidence, consisting of screen shots from Lands’ End, Kate Spade, and Express, establishes that the same entity commonly provides the relevant goods, namely, backpacks, sports packs, duffel bags, and/or sports bags and ladies’ clothing, and markets the goods under the same mark. This evidence also demonstrates that the relevant goods are sold through the same trade channels.
Therefore, Applicant’s and Registrants’ goods are considered related for likelihood of confusion purposes.
Conclusion
For the foregoing reasons, registration of the applied-for mark is refused pursuant to Section 2(d) of the Trademark Act.
ADVISORY – PRIOR-FILED PENDING 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.
HOW TO RESPOND
For this application to proceed, Applicant must explicitly address each refusal 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. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click to file a response to this nonfinal Office action.
ASSISTANCE
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.
/Samantha Sherman/
Examining Attorney
Law Office 123
571-270-0903
samantha.sherman@uspto.gov
RESPONSE GUIDANCE
