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:  September 23, 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

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 6329882.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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. 

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is “NFT” in standard characters and registrant’s mark is “NFT” in standard characters.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Goods/Services

 

The compared goods and/or 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’s goods and services are identified as follows:

 

            Class 9:

 

Digital photo frames; Downloadable computer software for managing cryptocurrency transactions using blockchain technology; OLED (Organic light emitting diode) display panels; Downloadable computer software for managing and verifying cryptocurrency transactions on a blockchain

 

Class 16:

 

Bookmarkers; Bookmarks; Envelopes; Sketchbooks; Adhesive note paper; Adhesive notepads; Adhesive paper labels; Art pictures in the nature of printed photographs; Art prints; Blank note cards; Blank paper notebooks; Blank writing journals; Blank or partially printed paper labels; Book-cover paper; Book covers; Coasters made of paper; Coasters of cardboard; Craft paper; Decorative paper centerpieces; Facial tissue; Graphic prints and representations; Illustrated notepads; Letter paper; Memo blocks; Paper bags and sacks; Paper banners; Paper gift cards; Paper gift tags; Paper hang tags; Paper note tablets; Paper notebooks; Paper party bags; Paper party decorations; Printed address books; Printed address labels; Printed agendas; Printed appointment books; Printed calendars; Printed coloring books; Printed comic books; Printed comic magazines; Printed daily planners; Printed diaries; Printed graphic novels; Printed holiday cards; Printed magazines and newsletters in the field of general human interest; Printed occasion cards; Printed paper signs; Printed picture books; Printed picture postcards; Printed posters; Scrapbook albums; Sticker albums

 

Class 21:

 

Mugs; Drinking vessels; Pet feeding and drinking bowls; Vacuum bottles; Water bottles sold empty

 

Class 25:

 

Beanies; Blouses; Hats; Neckties; Pants; Shirts; Socks; T-shirts; Underwear; Aprons; Baseball caps and hats; Dresses; Fleece jackets; Gloves; Hoodies; Jackets; Pajamas; Scarfs; Scarves; Skirts; Slippers; Sweatshirts; Tank tops

 

Class 35:

 

Advertising and marketing services, namely, promoting the goods and services of others; Advertising, including on-line advertising on a computer network; Business consulting and business information for enterprises; Business to business direct marketing services; Development, operation and administration of digital signage systems and digital advertising systems for others, namely, providing advertising space by electronic means and global computer information networks; Distribution of advertising materials; Internet advertising services; On-line retail store services featuring clothing, headwear, books, e-books, printed matter, notebooks, bags, backpacks, cups, mugs, pet merchandise, reprints of photographs, and newspapers.; Online retail store services featuring customized framed artwork consisting of drawings and pictures; Production of advertising materials; Providing business information; Publishing of advertising texts

 

Class 40:

 

Engraving; Digital photo printing services; Digital on-demand printing services of books and other documents; Imprinting messages on T-shirts; Imprinting messages on tee-shirts; Imprinting messages on wearing apparel and mugs; Imprinting of decorative designs on T-shirts; Photographic printing; Printing services; Printing of advertising matter; Customized imprinting of company names and logos on the goods of others, namely, on promotional merchandise, apparel and corporate gifts

 

Class 41:

 

Entertainment services, namely, providing non-downloadable prerecorded music via a website; Music composition services; Music composition for others; Music production services; Music publishing services; Music video production; Provision of information relating to music; Publication of electronic magazines; Publication of text books; Publication of texts, books, magazines and other printed matter; Publishing of books and reviews; Publishing of books, e-books, audio books, music and illustrations; Publishing of electronic publications; Providing information in the field of music via a website; Providing online music, not downloadable

 

Class 42:

 

Electronic site authoring; Graphic design of advertising logos; Graphic design of advertising materials; Graphic design of internet advertising

 

 

The registrant’s goods are identified as:

 

Class 25:

 

Clothing, namely, hoodies, sweatshirts, jackets, sweatpants, shirts, shorts, socks, underwear

 

 

With regard to the goods in Class 25, neither the application nor the registration(s) 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).

 

The applicant’s identification of goods in Class 25 is broad enough to encompass all the goods in the registrant’s Class 25 identification.  In fact, many of the clothing goods of both parties are identical.  The applicant’s “pants” could include registrant’s “sweatpants”.  The registrant’s goods identified as “shorts” are logically related to applicant’s ordinary clothing items.

 

The applicant’s wide range of goods and services overlap with the registrant’s goods because applicant provides services for retail stores featuring apparel, services for printing on clothing, and graphic design which may include design of images printed onto clothing.  Because the marks are identical, consumers encountering applicant’s goods and services in Classes 9, 16, 21, and 41 are related to registrant’s goods as being part of an overall line of goods from the same company.  The fact that the goods and/or services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods and/or services, but likelihood of confusion as to the source or sponsorship of those goods and/or services.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).

 

The marks of the parties are identical and the applicant’s goods and services are broad enough to encompass the registrant’s goods in Class 25.  The goods and services are not restricted to a particular trade channel and are intended for use by all consumers. Consumers would have every right to believe the goods and service emanate from the same source.

 

For the reasons cited, the examiner finds there is a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

 

Section 2(e)(1) Refusal – Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a feature, characteristic or purpose of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

The applicant has applied for the mark “NFT” in standard characters for a wide range of goods and services in Classes 9, 16, 21, 25, 35, 40, 41, and 42 as noted above.

 

The acronym “NFT” refers to “a non-fungible token; a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership (as of a specific digital asset and specific rights relating to it); the asset that is represented by an NFT.”  Merriam-Webster Online Dictionary, (2021) at www.merriam-webster.com. See attachment “nft”.   Within the world of digital assets and non-fungible tokens, the acronym “NFT” is also referred to as “nifty” or “nifties”.  Niftyist, (2021) at www.niftyist.com. See attachment “nifty”.

 

The applicant’s goods and services appear to comprise physical items that have images of digital assets printed or reproduced on them, or allow users to create, access or manage cryptocurrency transactions  for various digital assets represented by NFTs.

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).

 

Relevant consumers who already know what the applicant’s goods and services are would immediately understand they are items represented by non-fungible tokens, are physical representations of NFTs, or allow consumers to find or obtain digital assets represented by a non-fungible token.

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

For the reasons cited, the examiner finds the applicant’s mark to be merely descriptive and registration is refused under Section 2(e)(1) of the Trademark Act.

 

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

 

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

 

Section 2.61(b) Request for Information

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark: 

 

(1)       Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)       If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(3)       Applicant must respond to the following questions: 

 

 

- Do applicant’s goods contain or applicant services include or allow consumers to   obtain digital assets that are backed by a non-fungible token (NFT)?

 

-       Are the applicant’s goods physical representations of digital assets represented by an NFT?

 

-       Do applicant’s goods feature images of digital assets represented by NFTs?

 

-       Do applicant’s services allow consumers to find, create, obtain, or purchase digital assets represented by NFTs? 

 

-       Do applicant’s competitors use “NFT” to advertise similar goods and/or services? 

 

-       Who is the typical consumer of applicant’s goods and/or services? 

 

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

 

Search Results – Prior Pending Applications

 

The filing dates of pending U.S. Application Serial Nos. 90518293, 90538010, 90567874, and 90578913 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.

 

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 September 23, 2021 for

U.S. Trademark Application Serial No. 90582195

 

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. 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 September 23, 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.”