To: | X Gear 101 LLC (psdocketing@pattersonsheridan.com) |
Subject: | U.S. Trademark Application Serial No. 90294186 - BAWS - XGER/T019US |
Sent: | April 13, 2021 11:12:06 AM |
Sent As: | ecom113@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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90294186
Mark: BAWS
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Correspondence Address: |
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Applicant: X Gear 101 LLC
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Reference/Docket No. XGER/T019US
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: April 13, 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.
Amendment to Allege Use
On March 24, 2021, applicant submitted an Amendment to Allege Use. This Amendment to Allege Use is acceptable and the basis has been amended to Section 1(a).
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is BAWS (design plus words) for “Clothing, namely, shirts, hoodies, sweatshirts, hats, and mask” in Class 25.
The registered mark is BAWSE BODY for “Athletic shorts; Athletic sweaters; Bodysuits; Girdles; Hats; Jumpsuits; Leggings; Pants; Shapewear; Shirts; Shirts and short-sleeved shirts; Sweatpants; Waist bands; Waist belts; Waist cinchers; Athletic pants; Athletic shirts; Baseball caps and hats; Crop pants; Graphic T-shirts; Jogging pants; Long-sleeved shirts; Lounge pants; Shapewear, namely, girdle; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Sport shirts; Sports pants; Sports shirts; Sports caps and hats; Stretch pants; Sweat shirts; T-shirts; Yoga pants” in Class 25.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Similarity 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).
In this case, applicant’s mark is BAWS (design plus words) and the registered mark is BAWSE BODY. These marks are similar.
Specifically, the marks contain the highly similar lettering BAWS and BAWSE. These terms are nearly identical, sharing the lettering BAWS. Neither BAWS nor BAWSE has any meaning in English. See http://www.merriam-webster.com/dictionary/baws; http://www.merriam-webster.com/dictionary/bawse (showing no results for BAWS or BAWSE). Therefore, these terms have no particular meaning in English. However, the similarity in spelling means that these terms are similar in sound and appearance.
The registered mark contains the additional wording “BODY”, which has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Here, BODY is commonly used of clothing to indicate that the goods are intended to fit a person’s body. See http://www.bodyglove.com/collections/womens-apparel; http://www.trunkclub.com/womens-style/female-body-shapes; http://www.bodyrags.com/ (using BODY on clothing). Therefore, consumers are less likely to focus on this wording, rendering BAWSE the dominant portion of this registered mark.
Applicant’s mark does have a significant design element, however, registrant’s mark is in standard characters. 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 design element in applicant’s mark does not overcome the likelihood of confusion based on the similar wording.
Therefore, these marks are confusingly similar.
Relatedness of the Goods
Here, applicant’s goods are “Clothing, namely, shirts, hoodies, sweatshirts, hats, and mask” in Class 25.
The registrant’s goods are “Athletic shorts; Athletic sweaters; Bodysuits; Girdles; Hats; Jumpsuits; Leggings; Pants; Shapewear; Shirts; Shirts and short-sleeved shirts; Sweatpants; Waist bands; Waist belts; Waist cinchers; Athletic pants; Athletic shirts; Baseball caps and hats; Crop pants; Graphic T-shirts; Jogging pants; Long-sleeved shirts; Lounge pants; Shapewear, namely, girdle; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Sport shirts; Sports pants; Sports shirts; Sports caps and hats; Stretch pants; Sweat shirts; T-shirts; Yoga pants” in Class 25.
Here, the goods are overlapping as both offer sweat shirts, t-shirts, and hats. Further companies that offer a variety of clothing commonly offer masks. See http://oldnavy.gap.com/browse/category.do?cid=1164877; http://oldnavy.gap.com/browse/category.do?cid=1126985&&nav=meganav%3AMen%3AShop%20Men%E2%80%99s%20Categories%3ATops#pageId=0&department=75 (offering a variety of tops and masks); http://www.underarmour.com/en-us/c/accessories-facemasks-hoods-gaiters/; http://www.underarmour.com/en-us/c/mens/clothing/tops/; http://www.underarmour.com/en-us/c/mens/clothing/outerwear/ (offering a variety of tops and masks under the same mark); http://www.ae.com/us/en/x/reusable-cloth-face-masks; http://www.ae.com/us/en/c/women/tops/cat10049?pagetype=plp; http://www.ae.com/us/en/c/women/tops/hoodies-sweatshirts/cat90048?pagetype=plp (offering a variety of clothing tops and masks under the same marks).
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration has not co-existed for at least five years with the cited registration. Here, the cited registration has only been registered since March 9, 2021, and applicant’s oldest registration is from October 23, 2018. See attached copy of U.S. Registration No. 5589731. Thus applicant’s prior registrations do not obviate the Section 2(d) refusal.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal – Likelihood of Confusion
PRIOR PENDING APPLICATIONS ADVISORY
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.
However, to avoid abandonment, applicant must respond to the Refusal above and Requirements below.
REQUIREMENTS
IDENTIFICATION OF GOODS AMENDMENTS REQUIRED
Particular wording in the Identification of Goods is overly broad and indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Specifically, the wording “mask” in the identification is overly broad as this could encompass goods in multiple classes such as “Fashion masks being sanitary masks for protection against viral infection” in Class 10 or “Ski masks” in Class 25. Therefore, applicant must clarify the goods and classify them accordingly. If applicant adopts wording in more than one Class, applicant must also comply with the Multiple Class Application Requirements set forth below.
Overall Identification
Applicant may adopt the following Identification, if accurate (wording in bold and italics represents amendments with notes about the amendments in brackets):
Class 10: Mask in the nature of [clarify goods in Class 10, e.g., Fashion masks being sanitary masks for protection against viral infection, etc.]
Class 25: Clothing, namely, shirts, hoodies, sweatshirts, hats, and mask in the nature of [clarify goods in Class 25, e.g., ski masks, etc.]
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.
CLARIFICATION AS TO THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
The application identifies goods that are potentially classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
MULTIPLE CLASS APPLICATION REQUIREMENTS ADVISORY
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 25, if applicant adds any other Classes to the application, an additional Specimen will be required. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
MARK DESCRIPTION AMENDMENTS REQUIRED
The following description is suggested, if accurate:
The mark consists of a design of a stylized bear dressed as a boxed that is generally shaded in black and brown. The bear has red, white, and black eyes with “X” symbols over the eyes with a black “X” over a red circular left eye and red “X” over a black circular eye on the right with both outlined in white. The mouth appears black and red on the inside with white triangular fangs. The bear has a large red, black, and gold belt over its shoulder with black, red, and gold circular designs on the belt and a gold and red crown design. The bear is wearing another large belt around its waist in red, black, white, and gold, with the belt generally shaded in red and black with a gold eagle design above a red and white circle with gold boxing gloves around the eagle. The bear is wearing red and white boxing gloves with “BAWS” written in black on the cuffs of each glove. The wording “BAWS” appears below shaded in white on top and gold on the bottom and outlined in black, white, and gold.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and 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.
/Alison Keeley/
Examining Attorney
Law Office 113
(571) 272-4514
Alison.Keeley@uspto.gov
RESPONSE GUIDANCE