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:  June 18, 2020

 

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.

 

Trademark Act Section 2(d) Likelihood of Confusion Refusal – CLASSES 18 AND 25 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4570316 and 3747858.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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. 

 

Similarity of 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).

 

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).

 

Applicant’s mark is DUNE in standard character form. Registrant’s marks are for DUNE in standard character form and also in slightly stylized form. The standard character marks are identical in sound, appearance, meaning, and commercial impression. As for registrant’s stylized 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, 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”).

 

 

 

Similarity of Goods

 

The goods and/or 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 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).

 

Applicant’s goods in Class 18 are for “back packs and fanny packs and luggage” and in Class 25, for “Shirts, t-shirts, tank tops, sweatshirts, pants, sweatpants, hooded sweatshirts, jackets, footwear, hats and caps, warm-up suits, pajamas, underwear, athletic apparel, namely, moisture-wicking shirts, and jerseys, masquerade costumes, footwear, belts; ponchos; shell jackets; overalls.”

 

Registrant’s goods in U.S. Reg. No. 4570316 are for “Leather and imitations of leather and goods made of these materials and not included in other classes, namely, wallets, purses, travelling bags, handbags, day bags, clutch bags, occasion bags, evening bags, trunks and suitcases, brief cases; umbrellas, parasols and walking sticks,” in Class 18; and “Clothing, namely, jackets, trousers, jeans, shorts, shirts, blouses, skirts, hosiery, bathing suits, wind resistant jackets, overcoats, rain coats, scarves, ties, undershirts, sweaters, pullovers, cardigans, shirts, blouses, sport shirts, polo shirts, camisoles, slips, nightgowns, pyjamas, belts, gloves; footwear, namely, shoes, socks, high heel shoes, mid heel shoes, flat shoes, ballerina shoes, plimsolls, wedge shoes, boots, flat boots, heel boots, wedge boots, shoe boots, ankle boots, loafers, brogues, trainers, sneakers, sandals, flip flops; headwear, namely, hats, beanie hats, head scarves, caps, visors, sun visors,” in Class 25.

 

Registrant’s goods in U.S. Reg. No. 3747858 are for “designer men’s and women’s shoes” in Class 25; and “on-line ordering services, featuring men’s and women’s high end fashion shoes, clothing, handbags and hats.”

 

Both applicant and registrant provide several bag goods as well as a variety of common clothing items. Significant overlap exists over the bag and clothing goods, with both featuring kinds of luggage goods. As for clothing goods, there is overlap at least with shirts, jackets, and footwear goods.  Applicant’s identification of goods features no limitations on channels of trade or classes of purchasers. In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).

 

Finally, in addressing the online retail store services in Reg. No. 3747858, the use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

Conclusion

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but 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.  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). Because the marks are identical in sound, appearance, and commercial impression, and the relevant goods are in part identical,  and otherwise highly related, confusion is likely, and registration must be refused.

 

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.

 

Classification/Identification of Goods Unacceptable

 

Portions of the identification of goods are indefinite and must be clarified because they insufficiently describe the nature of the goods, include goods that are not properly classified, or refer to a registered trademark owned by a third-party[1].  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The examining attorney has reprinted the entire identification of goods and services below and has indicated where additional clarification is required and has made suggestions where appropriate. Applicant may adopt the following identification, if accurate:

 

Class 5: “first aid kits”

 

Class 6: “keychains” all key chains are proper in Class 14.

 

Class 9: “Pre-recorded digital video discs, blu-ray magneto-optical discs, and digital versatile discs featuring TV shows and motion pictures in the fields of fantasy, fiction {too broad, must indicate subject matter in greater detail, e.g. historical fiction}, science fiction, horror, humor, adventure; downloadable computer game software for use on mobile and cellular phones, personal computers, handheld computers and computerized consoles; magnets, namely, {indicate type of magnet goods, e.g., refrigerator magnets, decorative magnets}”

 

Class 10: “Stretchers”

 

Class 14: “Pins” {must clarify nature of the goods and re-classify if appropriate – ‘ornamental novelty pins’ are in Class 26, ‘lapel pins’ are in Class 14}

 

Class 16: “Calendars, postcards; posters; book marks; stickers; greeting cards; paper gift wrap; {must clarify, ‘collectible trading cards’ are OK in Class 16, while ‘trading cards for games’ are proper in Class 28} trading cards; party goods in the nature of paper party bags, paper party decorations, party ornaments of paper, paper napkins, paper place mats, invitation cards, paper table cloths, paper cake decorations; art books and coffee table books on scenes and characters from movies, games, and videos; reference books and encyclopedias on scenes and characters from movies, games and videos; pencil sets; books in the nature of diaries, notebooks, note cards, autograph books, blank journal books, and wall décor, namely, appliques {‘appliques’ is no longer acceptable wording in Class 16} in the form of decals for use as home décor; bookends”

 

Class 18: “Back packs and fanny packs and luggage”

 

Class 20: “Figurines of {indicate material, which determines classification, e.g. wax figurines, fabric figurines are acceptable in Class 20 – ‘figurines of marble’ are in Class 19}, Poly-resin replicas of {indicate what the replicas are, e.g., sculptures, figurines}, Poly-resin statues; vinyl figures, namely, {clarify nature of the goods, ‘toy vinyl figures’ are in Class 28}, pvc mixed media statues, namely, {clarify nature of the goods, if ‘PVC mixed media toy figures’ the goods are in Class 28}; inflatable beds”

Class 21: “Glass, ceramic and earthenware goods namely, collectible statues and collectible dioramas, cups, mugs, drinking glasses, figurines, {statues lunchboxes – unclear, are these lunchboxes in the form of statues?}, vacuum bottles; hydration packs {must clarify further, e.g., containing a fluid reservoir, delivery tube, and mouthpiece}”

 

Class 22: “Tents; Storage bags for camping, namely, for storing {indicate the particular kind of goods being stored, e.g., tents, cooking apparatus}; Tarps, namely, {must specify if fitted or unfitted – if fitted, these goods are specialized and classified based on the nature of the goods they are fitted for / if unfitted, must specify function or use, e.g., covering swimming pools} Tethers, namely, {function and material of tether must be provided to determine proper classification} and Carabiners, namely, {must provide additional information about goods, which determines classification, e.g., metal hardware, namely, carabiners of metal / non-metal hardware, namely, carabiners of plastic}; Hammocks; Stretchers {appear to be goods proper in Class 10}; Inflatable Beds {appear to be goods proper in Class 20}”

 

Class 24: “Sleeping bags”

 

Class 25: “Shirts, t-shirts, tank tops, sweatshirts, pants, sweatpants, hooded sweatshirts, jackets, footwear, hats and caps being headwear {suggested for clarity}, warm-up suits, pajamas, underwear, athletic apparel, namely, moisture-wicking shirts, and jerseys, masquerade costumes, footwear, belts; ponchos; shell jackets; overalls”

 

Class 28: “Toys, namely, {indicate common commercial or generic name for each kind of toy}; equipment sold as a unit for playing card games; hand held units for playing electronic games other than those adapted for use with an external display screen or monitor; game equipment sold as a unit for playing a board game, a card game, a manipulative game, stand alone video output game machines; toy banks; action figures and accessories therefor; Toy animal figures and accessories thereof; Slot machines; {Holiday Ornaments – these goods are classified based on material composition, e.g., if plastic, in Class 20 / if ceramic Class 21, etc.}; Christmas tree ornaments; Holiday Snow globes; articulated two and three dimensional positional game figures with tailored clothing {suggested for clarity}”

 

Class 41: “Entertainment services, namely, development of concepts for and production and distribution of motion pictures, television programs, Internet programs, videogames, multimedia entertainment content; publication of books, magazines and other printed matter”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Multi-Class Application – Advisory

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 14 classes; however, applicant submitted a fee(s) sufficient for only 13 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

Assistance

 

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. 

 

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

 

 

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

571-272-8844

jordan.baker@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.