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:  March 02, 2022

 

SUMMARY OF ISSUES:

• Section 2(d) Likelihood of Confusion Refusal
• Identification of Goods and Services Requires Clarification
• Domicile Address is Required

 

Section 2(d) Likelihood of Confusion Refusals-Partial Refusals

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5998231 and 6475439.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.  The registrations are owned by the same registrant.

 

The refusal based on Registration No. 6475439 is limited to the applicant’s Class 14 and Class 25 goods.

 

The refusal based on Registration No. 5998231 is limited to the applicant’s Class 9, 14, 25 and 41 goods and services.

 

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 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

The applicant’s mark is BICHOTA.  The registrant’s marks are BICHOTE and a stylized “B” and design and BICHOTE.

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

The dominant part of the registered mark that has the design element is the word BICHOTE.  The other registered mark is BICHOTE.  The applicant’s mark BICHOTA is similar in appearance, sound and commercial impression to the registered 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).

 

Comparison of the Goods

The registrant’s goods in Registration No. 6475439 are identified as “Hats; Pants; Shirts; Shoes; Underwear; Sweatshirts; T-shirts; Wristbands as clothing; Hooded sweatshirts; Jackets and socks.”  The applicant’s goods that are subject to the refusal based on this registration are identified as “jewelry and imitation jewelry; jewelry boxes; jewelry cases; watches and straps for watches” and “shirts, t-shirts, sweatshirts, hooded sweatshirts, jackets, tops, crop tops, bottoms, shorts, pants, jogging shorts, jogging pants, jeans, dresses rompers, socks, activewear, leggings, yoga pants, swimwear, hats, ponchos.”

 

The goods and services in Registration No. 5998231 are identified as “Hats; Jackets and socks; Pants; Shirts; Shoes; Sweatshirts; T-shirts; Underwear; Wristbands as clothing” and “Entertainment services in the nature of production of motion pictures, television shows, multimedia entertainment content and music.”  The applicant’s goods and services that are subject to the refusal based on this registration are identified as “musical sound recordings; downloadable musical sound recordings; pre-recorded CDs and DVDs featuring music and musical performances; musical audio and video recordings featuring music and musical performances; sunglasses; cases for eyeglasses and sunglasses; protective covers and cases for cell phones, laptops and portable media players” “jewelry and imitation jewelry; jewelry boxes; jewelry cases; watches and straps for watches” “shirts, t-shirts, sweatshirts, hooded sweatshirts, jackets, tops, crop tops, bottoms, shorts, pants, jogging shorts, jogging pants, jeans, dresses rompers, socks, activewear, leggings, yoga pants, swimwear, hats, ponchos” and “entertainment services in the nature of live musical performances; entertainment services, namely, personal appearances by a musical entertainer; providing non-downloadable prerecorded music and information in the field of music and entertainment via a global computer network; fan clubs; music composition and transcription for others; Music publishing services; Production of sound and music video recordings.” 

 

The registrant and applicant use their marks on the same type of clothing items and on other related clothing and jewelry items.

 

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

The registrant’s production of multimedia entertainment content and music would include the production of the applicant’s Class 9 goods and includes the same type of services and related services to the applicant’s Class 41 services.

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The applicant and registrant use very similar marks on the same type of goods and on related goods and services.  Consumers are likely to be confused and mistakenly believe that the goods and services come from the same source.  Registration is therefore refused for the relevant goods and services under Section 2(d) 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.

 

Identification of Goods and Services

The Class 3, 9, 14 and 41 identifications are acceptable.

 

The identification of goods is indefinite and must be clarified because the applicant must indicate the type of tops and bottoms and must list the specific activewear.  Additionally, it appears that a comma is missing between “dresses” and “rompers.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

shirts, t-shirts, sweatshirts, hooded sweatshirts, jackets, tops as clothing, crop tops, bottoms as clothing, shorts, pants, jogging shorts, jogging pants, jeans, dresses rompers, socks, activewear, namely, (list the specific items, e.g., sweatshirts, yoga pants, t-shirts, sweatpants) leggings, yoga pants, swimwear, hats, ponchos.

 

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.

 

Domicile Address

Applicant must clarify its domicile street address because the domicile address of record is for a third-party commercial mail receiving agency and does not appear to be applicant’s permanent legal place of residence or principal place of business.  See 37 C.F.R. §§2.11(b), 2.189; TMEP §601.01(b)(1).  A domicile address must identify either (1) the permanent legal place of residence, which is the place an individual applicant resides and intends to be the applicant’s principal home; or (2) the principal place of business, which is the juristic applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §803.05(a). 

 

In this case, the application record lists applicant as an individual and specifies applicant’s domicile address as follows:  PMB 504 304 Indian Trace,  Weston, Florida 33326.  According to the attached webpage evidence, this address is for a commercial mail receiving agency and thus does not appear to be the place applicant resides and intends to be applicant’s principal home.  See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1).  A commercial mail receiving agency is a private business that accepts mail from the U.S. Postal Service for recipients, keeps it for collection (usually a private mailbox), or re-mails it to another location. 

 

Response options.  Applicant must provide its domicile street address.  See 37 C.F.R. §2.32(a)(2), 2.189; TMEP §803.05.  Alternatively, applicant may provide documentation showing that the listed U.S. domicile address is, in fact, applicant’s domicile.  TMEP §601.01(b)-(b)(1), 803.05(a); see 37 C.F.R. §2.11(b).  

 

To provide applicant’s domicile street address.  After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to wizard question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address.  Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field.  However, any street address listed in the “Mailing Address” field will be publicly viewable.

 

To provide documentation to support applicant’s U.S. domicile address.  Applicant should provide documentation showing the name and listed domicile address of the individual/the most recent documentation showing that the address is the applicant’s business headquarters, for example one of the following:  (1) a current, valid signed rental, lease, or mortgage agreement; (2) a current, valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated no earlier than 60 days before the application filing date.  TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b).  Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information.  

 

To provide this documentation, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

 

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

 

 

/Kelley L. Wells/

Trademark Examining Attorney

Law Office 118

571-272-9312

Kelley.Wells@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 March 02, 2022 for

U.S. Trademark Application Serial No. 90837791

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.