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:  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
• Prior Pending Applications Advisory
• Identification of Goods Amendments Required
• Clarification as to the Number of Classes for which Registration is Sought Required
• Multiple Class Application Advisory
• Mark Description Amendments Required

 

 

SECTION 2(d) REFUSAL – 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. 6285908.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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.

 

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 [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

 

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 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.

 

These goods are related. 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).

 

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).

 

The attached Internet evidence establishes that the goods originate from the same sources under the same marks.  Thus, applicant’s and 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).

 

The examining attorney notes that applicant does have some registrations including the wording BAWS.  However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.

 

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

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

PRIOR PENDING APPLICATIONS ADVISORY

 

The filing dates of pending U.S. Application Serial Nos. 90069846, 90087959, 90192463, and 90593469 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.

 

However, to avoid abandonment, applicant must respond to the Refusal above and Requirements below.

 

REQUIREMENTS

 

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

 

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.]

 

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

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

 

The application references goods based on use in commerce that are potentially in more than one international class; therefore, if applicant adopts wording in more than one Class, applicant must satisfy all the requirements below for each international class:

 

(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

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of 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 et seq.  Here, the Mark Description omits certain elements, such as the fact that “BAWS” also appears on the bear’s arm bands.

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

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

• 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 April 13, 2021 for

U.S. Trademark Application Serial No. 90294186

 

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. 

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 April 13, 2021, 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.”