[Important Email Information]

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/567127

 

This application has been reinstated by the Commissioner for Trademarks.  This letter responds to the applicant’s communication filed on May 18, 2006.

 

The applicant argued against the Section 2(d) refusal.  For the following reasons, the foregoing is unacceptable.

 

Refusal Under Section 2(d) – Likelihood of Confusion

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2,969,101 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

            Similarity of the Marks

 

The applicant’s mark is XLR8 (Standard Character Format).  The cited registered mark is XLR8 (Typed).  The marks are identical.  Both marks consist solely of the alphanumeric designation “XLR8.”  The applicant does not dispute “the similarity of the appearance of the marks.”

 

Having established the first element of the likelihood of confusion analysis, the next step is to determine the relatedness of the goods.

 

            Relatedness of the Goods

 

The applicant’s goods are “Sports equipment, namely grips and grip tape for bats, racquets, and golf clubs; athletic gloves for baseball, racquetball, and golf; and practice baseballs.”  The registrant’s goods are “ATHLETIC EQUIPMENT, NAMELY, MOUTH GUARDS.”  The applicant argues “that the goods of the respective part[ies] are sufficiently distinct and lacking in association as to prevent any likelihood of confusion on the part of the reasonable consumer as to source or association between the products.”

 

As explained in the August 17, 2005 Office action, if the marks of the respective parties are identical, as is the case here, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

Further, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

The third-party registrations attached to the August 17, 2005 Office action clearly show that the goods listed in the application and the cited registration, namely, athletic mouth guards, and athletic grips, grip tapes, gloves, and/or baseballs, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  Attached to this Office action are representative website excerpts from the examining attorney’s search of the Internet using the Google® search engine which show that the applicant’s goods and the registrant’s goods are sold through the same channels of trade and to the same consumers.

 

The applicant “submits that the reasonably prudent consumer would be able to distinguish different marks for different goods.”[1]  As proof of the foregoing, the applicant points to the fact that the USPTO registered the cited registered mark over the applicant’s prior registration, Registration No. 2,847,940, for XLR8 (Typed) for “Sports training apparatus, namely training baseballs bats using internal incorporated weights.”  Prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office.  Each case is decided on its own facts, and each mark stands on its own merits.  AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).  The evidence in this case clearly shows that the applicant’s goods and the registrant’s goods are related.

 

The marks are identical.  The goods are related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

For the foregoing reasons, the refusal under Section 2(d) is maintained and made FINAL.

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 2 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 8 attachments  

1. 1sportsaut-1  

2. 1sportsaut-2  

3. 2sportsaut-1  

4. 2sportsaut-2  

5. 1modell-1  

6. 1modell-2  

7. 2modell-1  

8. 2modell-2  

 

Email 2 includes the following 5 attachments  

1. 1dicks  

2. 2dicks  

3. 2-adicks  

4. 1paragon  

5. 2paragon  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.