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:  May 04, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  To avoid abandonment, the applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issue Applicant Must Address

• Refusal Based on Trademark Act Section 2(d) – Likelihood of Confusion with Registered Marks

 

Additional Issue

• Possible Confusion with Pending Marks

 

Refusal Based on Trademark Act Section 2(d) – Likelihood of Confusion with Registered Marks

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in attached Registration Nos. 5547390, 4522000, 5910220, and 5576104.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

The applicant’s mark is MONARC for the following goods:

 

• Backpacks especially adapted for holding laptops and notebook computers (Class 9)

 

• Handbags; Luggage; Wallets; Book bags; Bum bags; Military duffle bags, garment bags for travel, tote bags, shoulder bags and backpacks; Shoe bags for travel; Sports bags (Class 18)

 

• Thermal insulated bags for food or beverages (Class 21)

 

• Footwear; Headwear; Bottoms as clothing; Tops as clothing (Class 25)

 

The cited marks are as follows:

 

MONARCH SERIES FIVE LAYER PROTECTION and design (Registration No. 5547390) for the following goods:

• Cases for wireless mobile devices, namely, cell phones, tablets, laptops, and portable computing devices (Class 9)

 

MONARCH (Registration No. 4522000) for the following goods:

• Travel bags (Class 18)

 

HOUSE OF MONARCH (Registration No. 5910220) for the following goods:

• Clothing, namely, dresses, shirts, pants, skirts, coats, jackets, hats, scarves, belts, sweaters (Class 25)

 

MONARX (Registration No. 5576104) for the following goods:

• Baseball caps and hats; Sweatshirts; T-shirts (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 and/or services 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 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. 

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

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 or services is typically less significant or less dominant when comparing marks because disclaimed matter is commonly used and would not be perceived by consumers as indicating the source of the goods or services.  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).

 

Comparison of the Marks

The applicant’s mark MONARC and the registrants’ marks MONARCH SERIES FIVE LAYER PROTECTION and design, MONARCH, HOUSE OF MONARCH, and MONARX are similar in appearance, sound, connotation, and commercial impression.  Overall, the marks have the same significance. 

 

The marks consist of the significant terms MONARC, MONARCH, or MONARX, which are phonetic equivalents.  The significant features of the marks are phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar.  In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). 

 

Two of the registrants’ marks include additional wording, but the applicant’s mark is merely a portion of these marks.  Registration No. 5547390 includes the wording “series five layer protection,” and Registration No. 5910220 includes the wording “house of.”  However, this additional wording describes features of the registrants’ goods.  Although the applicant’s mark does not contain the entirety of the registered marks, the applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Merely omitting some of the wording from a registered mark or marks may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, the applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from these marks.

 

The presence of the design element does not eliminate the likelihood of confusion of the marks.  Registration No. 5547390 also includes a design.  However, the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of the design element does not eliminate 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).

 

Disclaimed wording is less significant.   The exclusive rights to use of the terms “series” and “protection” in Registration No. 5547390 have been disclaimed; these terms are less significant because they are commonly used in industry and would not be perceived as source indicators by consumers.  See TMEP §1209 et seq.

 

The general impressions of the marks are identical.  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).

 

In this case, the applicant’s and registrants’ marks manifest the same general impression, as their appearance and impact are virtually identical. 

 

Comparison of the Goods and Services

The compared goods and services 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 and/or services] 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).

 

The applicant has applied for use of its mark on backpacks especially adapted for holding laptops and notebook computers (Class 9); handbags; luggage; wallets; book bags; bum bags; military duffle bags, garment bags for travel, tote bags, shoulder bags and backpacks; shoe bags for travel; sports bags (Class 18); thermal insulated bags for food or beverages (Class 21); and footwear; headwear; bottoms as clothing; tops as clothing (Class 25).

 

The registrants use their marks on cases for wireless mobile devices, namely, cell phones, tablets, laptops, and portable computing devices (Class 9) (Registration No. 5547390); travel bags (Class 18) (Registration No. 4522000); clothing, namely, dresses, shirts, pants, skirts, coats, jackets, hats, scarves, belts, sweaters (Class 25) (Registration No. 5910220); and baseball caps and hats; sweatshirts; T-shirts (Class 25) (Registration No. 5576104).

 

When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, that determination is based on the description of the goods and services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

The applicant and registrants provide identical goods.  The goods in the application and registrations are identical. The applicant and the registrant in Registration No. 5547390 provide computer baggage being backpacks or cases; the applicant and registrant in Registration No. 4522000 provide travel bags; the applicant and registrant in Registration No. 5910220 provide headwear and hats, and shirts and tops; and the applicant and registrant in Registration No. 5576104 provide headwear and baseball caps and hats, and tops and T-shirts.

 

Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods.  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, the applicant’s and registrants’ goods are related.  

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant or registrants.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant’s mark and registered marks, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.

 

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

 

The applicant should note the following issue.

 

Possible Confusion with Pending Marks

The filing dates of attached pending Application Serial Nos. 87055725, 88719914, and 90211243 precede the applicant’s filing date.  If the marks in the referenced applications register, the applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion of the marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of the 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, the applicant may present arguments in support of registration by addressing the issue of the potential conflict between the applicant’s mark and the marks in the referenced applications.  The applicant’s election not to submit arguments at this time in no way limits the applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 112

(571) 272-9140

leigh.case@uspto.gov

(800) 786-9199 (Trademark Assistance Center)

 

 

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 May 04, 2021 for

U.S. Trademark Application Serial No. 90324925

 

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. 

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 112

(571) 272-9140

leigh.case@uspto.gov

(800) 786-9199 (Trademark Assistance Center)

 

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 May 04, 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.”