To: | Jonathan Gronas (legal@korleur.com) |
Subject: | U.S. Trademark Application Serial No. 90258312 - KR - N/A |
Sent: | March 22, 2021 05:14:46 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90258312
Mark: KR
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Correspondence Address:
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Applicant: Jonathan Gronas
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Reference/Docket No. N/A
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 22, 2021
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
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).
1) Comparison with Registration No. 4511646
In the present case, applicant’s mark is KR in stylized format and registrant’s mark is KR in stylized format. Both marks include the lettering KR as the only lettering in the marks. Because the lettering in the marks are the same, they engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.
Additionally, the minimal stylization in the marks do not obviate a likelihood of confusion refusal. The lettering in the marks are nearly identical in sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Therefore, the marks are confusingly similar.
2) Comparison with Registration No. 5202500
In the present case, applicant’s mark is KR and registrant’s mark is KR. Both marks include the lettering KR as the only lettering in the marks. Because the lettering in the marks are the same, they engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.
Additionally, the minimal stylization in applicant’s mark does not obviate a likelihood of confusion refusal. The lettering in the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Moreover, registrant’s mark is in standard characters and could be displayed in any style, including applicant’s stylization. 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 and/or with a design element 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. 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”).
Therefore, the marks are confusingly similar.
Comparison 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).
1) Comparison with Registration No. 4511646
Applicant’s goods and/or services are “Jeans; Pants; Shirts; Shoes; Belts; Belts for clothing; Gloves as clothing; Hoodies; Jackets; Jerseys; Tops as clothing.”
Registrant’s goods and/or services are “Footwear.”
The attached Internet evidence, consisting of websites from J.Crew, Ralph Lauren, and Banana Republic, establishes that the same entity commonly manufactures, produces, or provides various clothing goods as well as footwear and markets the goods under the same mark. Thus, applicant’s and registrant’s goods and/or services 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).
2) Comparison with Registration No.
Applicant’s goods and/or services are “Jeans; Pants; Shirts; Shoes; Belts; Belts for clothing; Gloves as clothing; Hoodies; Jackets; Jerseys; Tops as clothing.”
Registrant’s goods and/or services are “Athletic shirts; Babies' pants; Belts; Belts for clothing; Bottoms; Button down shirts; Cargo pants; Cloth bibs; Clothing, namely, khakis; Dress pants; Dress shirts; Drivers; Gloves as clothing; Golf shirts; Hats; Hats for infants, babies, toddlers and children; Headgear, namely, cowboy hats; Hooded sweat shirts; Hoods; Infant and toddler one piece clothing; Jackets; Jeans; Jerseys; Leather belts; Leather hats; Maternity clothing, namely, pants, blouses, socks; Polo shirts; Shirts; Shoes; Sport shirts; Sports caps and hats; Sweat pants; Sweat shirts; T-shirts; T-shirts for babies, adults, children, women, men; Tee shirts; Tennis shoes; Ties; Tops; Track pants; Turtle neck shirts.”
In this case, regarding jeans, shirts, shoes, belts, belts for clothing, gloves as clothing, jackets, and jerseys, the goods and/or services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. 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 and/or services are related.
In this case, the application use(s) broad wording to describe “pants,” which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “Babies' pants,” “Cargo pants,” “Dress pants,” “Maternity clothing, namely, . . . pants,” “Sweat pants,” and “Track pants.”
Similarly, the application use(s) broad wording to describe “tops as clothing,” which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “Athletic shirts,” “Button down shirts,” “Dress shirts,” “Golf shirts,” “Hooded sweat shirts,” “Jerseys,” “Maternity clothing, namely, . . . blouses,” “Polo shirts,” “Shirts,” “Sport shirts,” “Sweat shirts,” “T-shirts,” “T-shirts for babies, adults, children, women, men,” “Tee shirts,” “Turtle neck shirts.”
Also, the registration use(s) broad wording to describe “Tops,” which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “Shirts; Hoodies; Jerseys; Tops as clothing.”
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 and/or services 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.
Finally, the attached Internet evidence, consisting of websites from J.Crew, Ralph Lauren, and Banana Republic, establishes that the same entity commonly manufactures, produces, or provides various clothing goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods and/or services 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
Because the marks are similar and applicant’s and registrant’s respective goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Therefore, applicant’s mark is refused registration under Trademark Act Section 2(d).
This requirement applies to both owners listed.
If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record. 37 C.F.R. §2.32(b)(3)(i); TMEP §803.03(a). Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization. 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(h).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement 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. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
Edward Payabyab
/Edward Payabyab/
Trademark Examining Attorney
Law Office 128
(571) 272-0021
edward.payabyab@uspto.gov
RESPONSE GUIDANCE