UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 5/5/2008

 

The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2007), and has determined the following:

REGISTRATION REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed an intent-to‑use application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2003), seeking federal protection to use the designation “AEON” on January 18, 2008.

 Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the federally protected marks in U.S. Registration No. 2,698,468, issued on March 18, 2003, and U.S. Registration No. 2,707,694, issued on April 15, 2003.  Id. § 1052(d); see TMEP § 1207.01.  The two registrations are held by one owner. 

Applicant has applied to register the mark “AEON” for indefinitely described goods, as further detailed in the requirements noted below, to wit, “business cases, brief cases; portfolio cases; holdalls for sports clothing; toiletry cases sold empty; leather money cases; jewelry rolls; luggage; overnight cases; document cases; handbags and textile shopping bags; tote bags; wallets and purses; attache cases and briefcases; credit card cases; change purses; briefcase-type portfolios; business card cases; luggage tags; key cases; leather jewelry rolls; leather travel cases for ties, luggage; trunks, folio cases; business card cases,” which are mainly classified in International Class 18.  The cited registered marks are (1) EON, in standard characters, for “luggage,” classified in International Class 18, protected by U.S. Registration No. 2,698,468, and (2) EON, in stylized lettering with associated design, also for “luggage,” classified in International Class 18, protected by U.S. Registration No. 2,707,694.

Section 2(d) bars registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services.  15 U.S.C. § 1052(d); see TMEP § 1207.01.  In re E. I. du Pont de Nemours & Company sets forth the principal factors to consider in determining whether one mark is likely to cause confusion with another mark.  476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, and the relatedness of the goods or services, the second DuPont factor.  Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 U.S.P.Q.2d 1557 (Fed. Cir. 2001).  In such cases, likely confusion is often determined by first comparing the marks for similarities in appearance, sound, connotation and commercial impression.  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.  See, e.g., In re Emulex Corp., 6 U.S.P.Q.2d 1312 (TTAB 1987); see TMEP § 1207.01.   

Comparison of the Marks

“Turning to the relevant DuPont factors, the ‘similarity or dissimilarity of the marks in their entireties’ is a predominant inquiry.”  Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 1165, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002) (quoting DuPont , 476 F.2d at 1361, 177 U.S.P.Q. at 567).  For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the “similarity or dissimilarity of the marks in their entirety is to be considered with respect to appearance, sound, and connotation” when a conflicting mark is measured against a federally protected mark.  Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000).  Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks create the same overall general impression.  Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 U.S.P.Q. 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.  See Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106 (TTAB 1975); TMEP § 1207.01(b). 

“[I]t has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate a likelihood of confusion.”  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980); see TMEP § 1207.01(b).  “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.”  In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007).  The Board has held this “especially true” where the application and registration are for goods that “may be referred to or recommended by word of mouth.”  Id. (citing Miles Labs., Inc. v. Whorton Pharmacal Co., 199 U.S.P.Q. 758 (TTAB 1978)).

Literal portions are generally the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  E.g., CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 200 (Fed. Cir. 1983) (finding minor designs insufficient to obviate likely confusion); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods.”); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 U.S.P.Q. 461, 462 (TTAB 1985) (“It has consistently been held that where a mark comprises a word portion and a design portion, it is the word features [that] are controlling.”).  For this reason, when a mark consists of a word portion and a design portion, greater weight is often given to the literal portions of the mark in determining whether there is a likelihood of confusion.  TMEP § 1207.01(c)(ii). 

With respect to the registrability of non-distinctive design elements, “[i]t is settled that common basic shapes such as circles, ovals, triangles, diamonds, stars and other geometric designs, when used as vehicles for the display of word or letter marks, are not regarded as indicia of origin for the goods to which they are applied in the absence of a showing of secondary meaning in the design alone.”  Permatex Co. v. Cal. Tube Prods., Inc., 175 U.S.P.Q. 764, 766 (TTAB 1972). 

In the present case, Applicant’s proposed mark “AEON” is comprised entirely of standard characters without design.  Registrants’ marks, both of which are “EON,” are comprised of (1) standard characters without design, and (2) stylized lettering with minor design. 

In comparison, the marks share the phonetic identical literal component AEON, a variant of EON,  Am. Heritage Dictionary of the English Language (4th ed. 2000), at http://www.bartleby.com/61/4/A0110400.html (attached hereto),  defined as “an indefinitely long period of time; an age” id., at http:// http://www.bartleby.com/61/7/E0170700.html (attached hereto), which is arbitrary as applied to the relative goods, and thus conceptually strong as a trademark.  See, e.g., Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 U.S.P.Q.2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as “a known word used in an unexpected or uncommon way” and observing that such marks are typically strong); see Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (holding the marks VEUVE ROYALE and VEUVE CLICQUOT PONSARDIN confusingly similar).  The term is the sole literal element of each mark. 

The sole additional design element of the mark protected by U.S. Registration No. 2,707,694 is a horizontal line at the both ends of the literal element.  However, the additional design element is a common basic shape and thus, does not offer sufficient distinctiveness to create a sufficiently distinct overall commercial impression from Applicant’s mark, based on settled law.  Consequently, the phonetically equivalent AEON and EON are the respective sole or dominant portions of Applicant’s and Registrant’s marks, as based on settled law.  See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 U.S.P.Q.2d 1531, 1534 (Fed. Cir. 1997); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999). 

Despite the difference in spelling, the dominant element of each mark would be indistinguishable in pronunciation, see RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980), and would likely convey identical connotations.  This would be particularly true for consumers who have only heard of Registrant’s mark, such as through word-of-mouth recommendations, who would not be aware of any difference in spelling at all.

Viewed in their entireties with the non‑dominant element appropriately discounted, the marks are nearly identical in appearance, identical in sound and connotation, and would create highly similar commercial impressions on the minds of purchasers.  Thus, despite considering the differences between the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002).  Therefore, the legal test for similarity of the marks favors a finding of likelihood of confusion.    

RELATEDNESS OF THE GOODS

For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002).  “When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”  Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992).  In addition, the stronger the first DuPont factor, meaning the greater the degree of similarity in the marks, the lesser the degree of relatedness that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion.  In re Concordia Int’l Forwarding Corp., 222 U.S.P.Q. 355 (TTAB 1983); see TMEP § 1207.01(a). 

In the instant case, Applicant’s identified goods, specifically, “business cases, brief cases; portfolio cases; holdalls for sports clothing; toiletry cases sold empty; leather money cases; jewelry rolls; luggage; overnight cases; document cases; handbags and textile shopping bags; tote bags; wallets and purses; attache cases and briefcases; credit card cases; change purses; briefcase-type portfolios; business card cases; luggage tags; key cases; leather jewelry rolls; leather travel cases for ties, luggage; trunks, folio cases; business card cases,” and the goods identified in federal Registration Nos. 2,698,468 and 2,707,694, to wit “luggage,”  are at least highly related if not identical goods.

Based on the application and registration, it is presumed that the respective goods would be commercially distributed and marketed without limitation, and would be available to purchasers at the same retail stores and outlets, distributorships, ordering services, online retail stores, and specialty stores and outlets. 

Therefore, the respective goods are sufficiently related to cause likely confusion as to their source in the minds of the consuming public, and thus, the legal test for relatedness of the goods favors a finding of likelihood of confusion.

For the above-stated reasons, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered marks.

Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

If Applicant chooses to respond to the refusal to register, Applicant must also respond to the following:

AMEND IDENTIFICATION OF GOODS

The identification of goods is unacceptable as partially indefinite, specifically, with respect to the listing for “portfolio cases.”  TMEP §§ 1402.01, 1402.03(a).  Applicant must clarify said identification to specify common commercial names and the nature and purpose of the identified goods to ensure proper classification and examination, as suggested by the attached listings and below.  Id. §§ 1401.05, 1402.01, 1402.05(a).  See attached listing from the Trademark Manual of Acceptable Identifications of Goods and Services for suggestions of acceptable, definite identifications and classifications with respect to the identified goods.

In addition, the identification may be overly broad, including goods classified in multiple international classes, specifically, International Classes 16 and 18.  TMEP § 1401.04. 

Applicant must amend the application by specifying the goods, classifying the goods in the proper classes and paying any outstanding fee to add an additional class, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b), 1403.02(c). 

Applicant may adopt the following framework of identifications and classifications of goods, if appropriate: 

 

International Class 16 (NOT AN ACTIVE CLASS)

International Class 16—Portfolio cases FOR [identify specific use, e.g., art and photography prints and related works].

International Class 18

International Class 18—Business cases, brief cases; briefcase-type portfolios; holdalls for sports clothing; toiletry cases sold empty; leather money cases; jewelry rolls; luggage; overnight cases; document cases; handbags and textile shopping bags; tote bags; wallets and purses; attache cases and briefcases; credit card cases; change purses; briefcase-type portfolios; business card cases; luggage tags; key cases; leather jewelry rolls; leather travel cases for ties, luggage; trunks, folio cases; business card cases.

TMEP §§ 1402.01, 1402.03.

Please note that while the identifications of the above-identified goods may be amended for purposes of clarification or limitation, adding goods or broadening the scope is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06.  Therefore, Applicant may not amend identifications to include goods or services not within the scope set forth in the present identifications.

For assistance with classification and identification of goods and services in trademark applications, the searchable Trademark Manual of Acceptable Identifications of Goods and Services is available online at http://tess2.gov.uspto.report/netahtml/tidm.html.

insufficient fee for indicated goods

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies goods that are in TWO international classes; however Applicant paid the fee for only ONE class.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for any additional classes.  37 C.F.R. § 2.86(a)(2); TMEP §§ 810.0l, 1401.04, 1401.04(b), 1403.01.

multi-class section 1(b) application requirements fee potentially insufficient

If Applicant prosecutes this application as a combined or multiple-class application, then Applicant must comply with each of the following for those goods based on an intent-to‑use the mark in commerce under Section 1(b) of the Trademark Act:

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  See TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. § 2.86(a)(2); see TMEP §§ 810.01, 1403.01.

 

The filing fee for adding classes to an application is as follows:

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. § 2.6(a)(i)–(ii); TMEP § 810.

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.

 

Please contact the undersigned attorney with any questions.

Sincerely,

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

USPTO - Trademarks

Law Office 114

(571) 272-5892 direct line

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office Action, please contact the assigned examining attorney.  A response to this Office Action should be filed using the Office’s Response to Office Action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office Action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 5/5/2008 FOR

APPLICATION SERIAL NO. 77375562

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77375562&doc_type=OOA&mail_date=20080505 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 5/5/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.