To: | Lynco Distribution, Inc (jay@hamiltoniplaw.com) |
Subject: | U.S. Trademark Application Serial No. 90549517 - ONESHOT - LynOS_W025 |
Sent: | September 09, 2021 07:30:50 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90549517
Mark: ONESHOT
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Correspondence Address: |
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Applicant: Lynco Distribution, Inc
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Reference/Docket No. LynOS_W025
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: September 09, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. 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.
Likelihood of Confusion-Section 2(d)
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on the identified goods, is likely to be confused with the registered marks in U.S. Registration Nos. 5030697 and 4883017. See the enclosed registrations.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
Applicant seeks to register the mark ONESHOT in standard characters. The mark in Registration No. 5030697 is ONESHOT stylized. The mark in Registration No. 4883017 is ONE SHOT INDUSTRIES in standard characters.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The applicant’s mark and the mark in Registration No. 5030697 are nearly identical in appearance, sound and meaning as they both contain the wording ONESHOT, the dominant and only element of the applicant’s mark and the dominant element of the registrant’s mark. 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, applicant’s mark in standard characters could be presented in the same manner display as the registrant’s mark. 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”).
The applicant’s mark and the mark in Registration No. 4883017 are nearly identical in appearance, sound and meaning as they both contain the wording ONESHOT or ONE SHOT, the dominant and only element of the applicant’s mark and the dominant element of the registrant’s mark.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and services come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant's goods are headwear, gloves and sweatshirts. The goods in Registration No. 5030697 are caps, hats, t-shirts, long sleeve shirts, hooded sweatshirts, jackets, and coats. The goods are related as they are articles of clothing and identical in part as both the applicant’s and registrant’s identification of goods include headwear and sweatshirts. The goods would flow in the same channels of trade. The goods would be sold on clothing websites, and in catalogs and stores. The goods would be marketed to people who are interested in buying articles of clothing.
The goods in Registration No. 4883017 are T-shirts, hats, caps, beanies, socks, underwear, gloves, jackets, sweaters, pants, jeans, headbands, tank top, wristbands, and scarves. The goods are related as they are articles of clothing and identical in part as both the applicant’s and registrant’s identification of goods include headwear and gloves. The goods would flow in the same channels of trade. The goods would be sold on clothing websites, and in catalogs and stores. The goods would be marketed to people who are interested in buying articles of clothing. As a consequence confusion as to the identity of the source of the goods is likely to occur.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Email/Telephone for Inquiries
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.
/Angela M Micheli/
Trademark Examining Attorney, Law Office 101
571.272.9196
angela.micheli@uspto.gov
RESPONSE GUIDANCE