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 09, 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 THAT APPLICANT MUST ADDRESS:

 

• Refusal under Section 2(d) – Likelihood of Confusion
• Description of the Mark Requirement
• Requirement for Information about U.S. Counsel
• Domicile Address Requirement – Address of Record Unacceptable

 

REFUSAL UNDER 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. 4237878 and 4601309.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applied-for mark is “MYKONOS” in stylized form for “jewelry” in International Class 14.

 

The cited mark in U.S. Registration No. 4237878 is “MYKONOS” in standard character form for “cosmetics, namely, perfumes. cologne and eau de toilette” in International Class 3.

 

The cited mark in U.S. Registration No. 4601309 is “MYKONOS” in standard character form for “blouses; dresses; pants; shirts; skirts; sweaters; t-shirts; tops” in International Class 25.

 

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 and differences in the marks.”); TMEP §1207.01. 

 

Similarity of the Marks

 

The applied-for mark is “MYKONOS” in stylized form.

 

The cited mark in U.S. Registration No. 4237878 is “MYKONOS” in standard character form.

 

The cited mark in U.S. Registration No. 4601309 is “MYKONOS” in standard character form.

 

Applicant’s applied-for mark “MYKONOS” in stylized form is sufficiently similar to each registrant’s mark for “MYKONOS” in standard character form to find a likelihood of confusion because they share identical wording the only difference in applicant’s mark is stylization, which does not obviate their similarity.  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 present case, applicant’s mark is “MYKONOS” in stylized form and each registrant’s mark is “MYKONOS” in standard character form.  The wording in 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 the wording is identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and each registrant’s respective goods.  Id.

 

The wording in applicant’s mark is dominant over the stylization, which goes towards a finding of likelihood of confusion.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Finally, the fact that the registered marks are in standard character format, means that the registered marks may be used in any manner – including in a stylization identical to that of the applicant.  This goes towards a finding of likelihood of confusion.  A mark in typed or 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 generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display, as is the case here.  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”).  Thus, applicant’s stylized font does not detract from the dominant wording shared by the registered and applied-for marks.

 

As such, considered in their entireties, applicant’s and each registrant’s marks share a common word and evoke a highly similar overall commercial impression which substantially outweighs the differences in stylization.  Therefore, the marks are confusingly similar under Section 2(d) of the Trademark Act.

 

Relatedness of the Goods

 

Applicant’s goods are closely related to each registrant’s goods under Section 2(d) of the Trademark Act.  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 identified goods in the applied-for mark are for “jewelry” in International Class 14.

 

The identified goods in U.S. Registration No. 4237878 are for “cosmetics, namely, perfumes. cologne and eau de toilette” in International Class 3.

 

The identified goods in U.S. Registration No. 4601309 are for “blouses; dresses; pants; shirts; skirts; sweaters; t-shirts; tops” in International Class 25.

 

The compared goods 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] 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).

 

Here, applicant’s and each registrant’s identified goods clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record.  Evidence attached herein from the following sources demonstrates that the same source commonly offers, produces, manufactures, or sells jewelry of applicant, perfumes, cologne, and/or eau de toilette of U.S. Registration No. 4237878, and/or blouses, dresses, pants, shirts, skirts, sweaters, t-shirts, and/or tops of U.S. Registration No. 4601309:

 

-          Calvin Klein, offers, produces, manufactures, or sells jewelry of applicant, perfumes, cologne, and/or eau de toilette of U.S. Registration No. 4237878, and blouses, dresses, pants, shirts, skirts, sweaters, t-shirts, and/or tops of U.S. Registration No. 4601309. http://www.calvinklein.us/en

-          Guess, offers, produces, manufactures, or sells jewelry of applicant, perfumes, cologne, and/or eau de toilette of U.S. Registration No. 4237878, and blouses, dresses, pants, shirts, skirts, sweaters, t-shirts, and/or tops of U.S. Registration No. 4601309. http://www.guess.com/us/en/home/

-          Kate Spade, offers, produces, manufactures, or sells jewelry of applicant, perfumes, cologne, and/or eau de toilette of U.S. Registration No. 4237878, and blouses, dresses, pants, shirts, skirts, sweaters, t-shirts, and/or tops of U.S. Registration No. 4601309. http://www.katespade.com/

-          Marc Jacobs, offers, produces, manufactures, or sells jewelry of applicant, perfumes, cologne, and/or eau de toilette of U.S. Registration No. 4237878, and blouses, dresses, pants, shirts, skirts, sweaters, t-shirts, and/or tops of U.S. Registration No. 4601309. http://www.marcjacobs.com/

-          Old Navy, offers, produces, manufactures, or sells jewelry of applicant, and blouses, dresses, pants, shirts, skirts, sweaters, t-shirts, and/or tops of U.S. Registration No. 4601309. http://oldnavy.gap.com/

 

The attached Internet evidence, consisting of third party use, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and/or the goods are similar or complementary in terms of purpose or function.  Thus, applicant’s and each registrant’s 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).

 

Based on the analysis above, applicant’s goods are closely related to each registrant’s goods.

 

Section 2(d) Refusal Summary

 

In total, the parties’ marks are confusingly similar in overall commercial impression because they share identical wording the only difference in applicant’s mark is stylization, which does not obviate their similarity.  Applicant’s and each registrant’s goods are commercially related and are available in the same trade channels as shown by the evidence.  Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods.  Accordingly, registration must be refused 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.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

DESCRIPTION OF THE MARK REQUIREMENT

 

Applicant must submit an amended description of the mark because the current one uses broad, vague language that does not accurately describe the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.  In this case, the description is vague because the particular stylization elements of the letter “M” are not specified.  The applicant must accurately specify the significant aspects of the mark and describe in more detail where each design and wording element appears in relation to each other.  For stylistic purposes, the wording appearing in the mark should be in all capital letters surrounded by quotation marks. 

 

The following description is suggested, if accurate (the examining attorney’s suggested changes and additions are in bold font and suggested items to remove have a line through them):

 

The mark consists of “MYKONOS” in stylized lettering. The “M” is the shape of two angles, the two middle strokes of the “M” do not connect or overlap, and the diagonal downward sloping stroke reaches the base alignment of the vertical strokes.

 

REQUIREMENT FOR INFORMATION ABOUT U.S. COUNSEL

 

Attorney bar credentials required.  The application record indicates that applicant is represented by Oppedahl Patent Law Firm LLC; however, the record is unclear about the U.S. counsel of record because this does not identify an individual qualified to practice before the USPTO.  See 37 C.F.R. §11.14(a); TMEP §§602 et seq.  Only attorneys, not law firms, who are active members in good standing of the bar of a highest court of a U.S. state (including the District of Columbia or any U.S. commonwealth or territory) may practice before the USPTO in trademark matters.  37 C.F.R. §§2.17(a), 11.14; TMEP §§602.01-.03.  Accordingly, applicant must provide documentation showing the attorney’s active bar membership in good standing in the designated bar, such as a certificate of good standing, a letter from the bar, or if the bar lists a member’s standing and admission details, a printout from the website of the specified bar showing the URL and print date.  37 C.F.R. §§2.17(b)(3), 2.61(b). 

 

If the originally submitted attorney bar information is incorrect, applicant’s attorney must specify the correct bar information and provide supporting documentation showing the attorney’s active bar membership in good standing.  37 C.F.R. §§2.17(b)(3), 2.61(b).  Otherwise, applicant may appoint or designate a different attorney who is qualified to practice before the USPTO under 37 C.F.R. §11.14.  See 37 C.F.R. §2.17(a).

 

Failure to comply with this requirement is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that the attorney’s bar information is available on a state bar’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

To provide attorney bar credentials or to change bar information.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) explain the documentation provided and (2) click the button below the text box to attach evidence.  To change attorney bar information, go to the “Attorney Information” page of the form and update the bar information section.  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

DOMICILE ADDRESS REQUIREMENT – ADDRESS OF RECORD UNACCEPTABLE

 

Applicant must provide applicant’s domicile address.  All applications must include the applicant’s domicile address, which is required for a complete application.  See 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189. 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as a juristic entity and specifies applicant’s domicile as an incomplete address in that it lists an entire floor of a building instead of a particular street address.  In most cases, an address that is not a complete address is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, applicant must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile.  Examination Guide 4-19, at I.A.3.

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.

 

To provide applicant’s domicile street address.  After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  Information provided in the TEAS response form will be publicly viewable. 

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)        First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)        Use the radio buttons to select “Attorney” for the role of the person submitting the form;

(b)        Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)        On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)        Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)        Answer “yes” to wizard question #3 and click “Continue;”

(b)        Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form. 

 

RESPONSE GUIDELINES

 

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 each refusal and/or requirement 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.    

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 December 09, 2020 for

U.S. Trademark Application Serial No. 90246795

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 December 09, 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.”