UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

INTERNATIONAL REGISTRATION NO. 1165516

 

The assigned examining attorney acknowledges receipt of applicant’s recent response.  Through the response, applicant argues against the refusal of the mark under Section 2(d) of the Trademark Act.  In addition, applicant has properly amended the identification of goods.  Further, applicant has provided information concerning the significance of the wording in the mark. 

 

The examining attorney has considered the arguments and amendments and withdraws the refusal of the mark under Section 2(d) of the Trademark Act resulting from U.S Registration Nos.  3170453 and 3254427; U.S. Registration No. 2700320; as well as U.S. Registration No. 4020364.

 

However, the examining attorney continues the refusal under Section 2(d) of the Trademark Act resulting from U.S. Registration No. 3451018 in International Class 12 and U.S. Registration No. 4264578 in International Class 11 due to the similarities in the marks and the identified goods. 

 

In addition, upon further consideration of the marks and identified goods, this office action sets forth an additional refusal of the proposed mark in International Class 11 for the reasons noted below. The examining attorney apologizes to applicant for the delay in raising this issue and any inconvenience resulting to applicant.

Refusal-Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2950218 and 2577651.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods.  Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Additionally, the goods are compared to determine whether they are similar or 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, (a)(vi).

 

I.                U.S. Registration No. 2950218-Refusal Limited to International Class 11

 

Similarity of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

The registered mark is ENDURABLE in typed form.  The proposed mark is ENDURA in standard characters.  The marks of the parties are similar in sound and commercial impression because the wording ENDURA is a component of the marks.

 

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH).

 

Similarity of the Goods

The goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

Registrant’s goods are:

 

• Flashlights. (Class 11).

 

Applicant’s goods, as amended, are:

 

• Lamps and lights for cycles; LED lights for cycling, namely, LED lamps for bicycles and micro LED lights for bicycles; headlights for bicycles; rear lights for bicycles; bicycle reflectors; parts and fittings for all the aforesaid. (Class 11).

 

The goods of the parties are related because they are in the nature of lighting products.  The attached Internet evidence consists of third party advertising.  This evidence establishes that the same entity commonly produces flashlights and lamps and lights for bicycles as well as LED lighting for bicycles and markets the goods under the same mark and that these goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods are related.  See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).  Please see the evidence outlined below:

 

1)     Evidence from http://www.fenixlighting.com/ advertising flashlights and lighting products for cycling all originating from the same source and travelling in the same channels of trade.

2)     Evidence from http://socalflashlights.com/index.php?main_page=product_info&products_id=72 advertising flashlights and bicycle lights and headlights all travelling in the same channels of trade.

3)     Evidence from http://www.foxfury.com/category_flashlights.php and http://www.foxfury.com/category_utility_bike_lights.php advertising flashlights and bicycle lighting originating from the same source and travelling in the same source.

4)     Evidence from http://www.phoebus.com/BikeLights.html advertising bicycle lighting products and flashlights originating from the same source and travelling in the same channels of trade.

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely, flashlights and bicycle lighting products, are of a kind that may emanate from a single source under a single mark.  See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

II.              U.S. Registration No. 2577651-Refusal Limited to International Class 11

Similarity 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 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 ENDURA in standard characters and registrant’s mark is also ENDURA and is in typed form.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods.

 

Therefore, the marks are confusingly similar. 

 

Similarity of the Goods

As noted above, the goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).  

 

Moreover, where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion.  See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

 

Registrant’s goods are:

 

• Electric outdoor lights. (Class 11).

 

Applicant’s goods are:

 

• Lamps and lights for cycles; LED lights for cycling, namely, LED lamps for bicycles and micro LED lights for bicycles; headlights for bicycles; rear lights for bicycles; bicycle reflectors; parts and fittings for all the aforesaid. (Class 11).

 

The goods of the parties are related because they are in the nature of lighting products.  The attached Internet evidence consists of third party advertising.  This evidence establishes that the same entity commonly produces outdoor lights, lights for bicycles and for cycling under the same mark and that these goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).  Please see the evidence outlined below:

 

1)     Evidence from http://www.philipsbikelight.com/ and http://www.usa.philips.com/c/choose-your-lightfixture/269507/cat/en/ advertising bicycle lights and outdoor lighting originating from the same source.

2)     Evidence from http://www.pegasuslighting.com/led-battery-operated-bicycle-spoke-safety-lights-oval.html advertising bicycle lights and outdoor lights travelling in the same channels of trade.

 

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).  Therefore, the mark is refused registration.

 

Failure to Respond-Partial Refusal Abandonment Advisory

If applicant does not respond to this Office action within the six-month period for response, then the following goods will be deleted from the application: 

 

• Lamps and lights for cycles; LED lights for cycling, namely, LED lamps for bicycles and micro LED lights for bicycles; headlights for bicycles; rear lights for bicycles; bicycle reflectors; parts and fittings for all the aforesaid.  (Class 11).
• Trailers for towing behind bicycles. (Class 12).

 

The application will then proceed with the following goods only:

 

• Portable visibility lighting devices for safety purposes; reflective safety products, namely, personal reflectors for cyclists for road safety, reflective armbands for cyclists for protection against accident or injury and reflective armbands for cyclists containing LED lights; protective headgear, namely, crash helmets for cyclists for use by cyclists for protection against accident and injury; tire pressure gauges; parts and fittings for all the aforesaid. (Class 9).
• Bicycles; frames for bicycles; foldable bicycles; wheels, rims, spokes, inner tubes, brake pads, seat posts, saddles, pedals, foot grips, namely, bicycle pedal clips and straps, hand grips, namely, handlebar grips, handlebars, all being for bicycles; puncture repair kits for bicycle tires comprised of tire repair patches; manually operated pumps for inflating bicycle and cycle tires; chain guards for bicycles; chain-stay guards for bicycles; bottle cages for bicycles; structural parts functioning as scratch protectors and scratch guards for bicycles; grips for handle bars of bicycles; structural parts of bicycles functioning as mud guards; covers for bicycles in the nature of fitted bicycle covers; bicycle stands; saddle bags for cycles, pannier bags for bicycles, panniers adapted for bicycles; briefcases specially adapted to function as bicycle carriers for carriage by bicycles, rack packs, namely, bicycle racks for vehicles, seat bags, namely, bicycle seat packs, handle bar bags for bicycles, bags specially adapted for bicycle wheels; bags specially adapted for bicycles for carrying water carriers; parts and fittings for all the aforesaid. (Class 12).
• Luggage for cyclists, namely, tool bags sold empty, courier bags, rucksacks, none being of imitation leather or imitations of leather. (Class 18).
• Articles of clothing, namely, pants, tops, jackets, footwear and headwear for cyclists; arm warmers for cyclists, leg warmers for cyclists, and body warmers for cyclists in the nature of vests for cyclists; cycling tops, cycling shorts, cycling longs, padded undershorts for cyclists; gloves for cyclists; jackets, hooded jackets, gilets, jerseys, tops, shirts, T-shirts, base layers, trousers, over trousers, shorts, suits, knickers, pants, underwear, fingerless gloves, socks, neckwear, neck warmers, scarves, head bands, hoods, hats, caps, beanies, balaclavas, shoes and overshoes, all for cycling. (Class 25).
• Elbow and knee protectors for cyclists. (Class 28).

 

 37 C.F.R. §2.65(a).

 

Conclusion

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Linda M. Estrada/

Trademark Examining Attorney

Law Office 104

(571) 272-9298

(571) 273-9104 Fax

Linda.Estrada@USPTO.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.