United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79268184
Mark: MOIA
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Correspondence Address: |
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Applicant: Volkswagen Aktiengesellschaft
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Reference/Docket No. 919-521
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 17, 2020
International Registration No. 1489035
This Office action is in response to applicant’s communication filed on December 31, 2019.
In a previous Office action dated October 3, 2019, the trademark examining attorney refused registration of the applied-for mark as to International Class 25 based on Trademark Act Section 2(d) for a likelihood of confusion. In addition, applicant was required to satisfy obtain representation by U.S.-licensed counsel and amend the identification of goods.
Based on applicant’s response, the requirements raised in the prior Office action have all been satisfied. See TMEP §§713.02, 714.04. However, the refusal as to International Class 25, based on Section 2(d), is made FINAL for the reasons set forth below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF FINAL ISSUE:
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark was refused, as to International Class 25 only, because of a likelihood of confusion with the mark in U.S. Registration No. 4125323. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The registration was attached to the prior Office action.
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). Only those factors that are “relevant and of record” need be considered. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
In light of applicant’s response, the following factors are of record and therefore considered below: (1) the similarities between the compared marks; (2) similarities in the channels of trade; (3) the relatedness of the compared goods; and (4) sophistication of the relevant consumers. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747; TMEP §1207.01.
Similarity of the 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); 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); TMEP §1207.01(b).
In this case, the following marks must be compared:
Application: MOIA, in standard characters
Registration: MOYABRAND, in stylized characters with a design
The marks were previously found to be confusingly similar because the commercial impression for the registered mark is dominated by the wording MOYA, and this may be pronounced the same as the applied-for mark.
Applicant argues that the word BRAND differentiates the registered mark from the applied-for mark. This argument is not persuasive because the wording BRAND lacks any source-indicating significance. In re Wilson, 57 USPQ 2d. 1863, 1865 (TTAB 2001).
Applicant further argues that the appearance of the marks is different and, as a consequence, there is no likelihood of confusion. However, “[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); TMEP §1207.01(b). The analysis is based 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); TMEP §1207.01(b). For this reason, it is appropriate to weight the components of the respective marks to determine the matter that dominates and will form the basis of the general impression retained by the average consumer.
Here, the wording dominates in forming the commercial impression of the registered mark because it is the portion of the mark used in requesting or referring to the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); TMEP §1207.01(c)(ii). Because the wording may be pronounced the same, the general recollection of the average consumer is such that confusion is likely; although MOIA and MOYA are spelled differently, this requires a precise recollection of the marks that consumers are not expected to possess. Moreover, the wording BRAND lacks any source-indicating significance. The similarity of the marks therefore supports the conclusion thatthere is a likelihood of confusion.
Channels of Trade
The similarity of channels of trade is also relevant in determining the likelihood of confusion. TMEP §1207.01(a)(iii). In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. Channels of trade refers “how and to whom the respective goods of the parties are sold.” J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition §24:51 (5th ed. 2018).
Applicant argues that the channels of trade are different because its goods “will be directed to those interested in transportation networks and mobility needs” whereas registrant’s trade channels “will be directed to those persons interested in martial arts.”
Applicant’s argument is foreclosed by the identification of goods in the application and registration. Determining likelihood of confusion is based on identification of goods stated in the application and registration at issue. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Nothing in the identification of goods in the application restricts the channels of trade of applicant’s “T-shirts, polo shirts, jackets; caps being headwear” in any manner whatsoever. While the registration identifies “Martial Arts uniforms; martial arts belts”, it also identifies “t-shirts, sweatpants, shorts, pants, and shirts” without restriction. Thus, it can be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
This factor supports the conclusion that there is a likelihood of confusion.
Similarity of the Goods
The goods must be compared to determine whether they are similar or commercially related. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); TMEP §§1207.01, 1207.01(a)(vi). The compared goods 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); 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., 668 F.3d at 1369, 101 USPQ2d at 1722; TMEP §1207.01(a)(i).
Moreover, in considering likelihood of confusion, it is not necessary to find relatedness as to each and every product listed in the application and registration; “it is sufficient if likelihood of confusion is found with respect to use of the mark on any item that comes within the description of goods in the application or registration.” Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007).
In this case, the relatedness of the following relevant goods must be considered:
Application: T-shirts, polo shirts, jackets; caps being headwear
Registration: Martial Arts uniforms; martial arts belts; t-shirts, sweatpants, shorts, pants, and shirts
The goods were previously found to be related because the goods identified in the application are encompassed by those identified in the registration. Applicant has not disputed that the goods are the same.
Nevertheless, the trademark examining attorney has further considered the relationship between the goods.
GAP: shirts, jackets, and caps
PATAGONIA: shirts, jackets, and caps
HARLERY-DAVIDSON: shirts, jackets, and caps
VOLKSWAGEN: shirts, jackets, and caps
RALPH LAUREN: shirts, jackets, and caps
DICKIES: shirts, jackets, and caps
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).
Although applicant does not dispute the goods are the same, applicant argues that there is no likelihood of confusion because there is no evidence that “Applicant’s apparel products will be marketed in a way that would be encountered by the same customers of Registrant’s martial arts related products.” This argument not persuasive because it rests on the false premise that the registration is limited to martial-arts related goods, or limited in scope to purchasers of such goods.
Moreover, applicant is reminded that determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Because both the application and registration identify the same goods and have no restrictions as to channels of trade, they may be marketed in the same way. Any contention to the contrary requires extrinsic evidence of use, and such evidence is of little, if any, relevance. Id.
Consumer Sophistication
Applicant contends that the relevant purchasers are sophisticated because “the products covered by this application are more in the nature of ‘accessory products’ provided to the ultimate consumer and will likely be offered in association with Applicant’s downloadable smart phone app to access its transportation network.”
Applicant’s argument is not persuasive because the relevant consumers are defined by the identification of goods in International Class 25: “T-shirts, polo shirts, jackets; caps being headwear.” In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Nothing in the identification supports applicant’s contention that the consumers are sophisticated.
The trademark examining attorney notes that for products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)). Evidence from Amazon.com shows that goods like applicant’s “caps being headwear” may cost as little as $6.96 and that goods like registrant’s “shorts” are similarly priced. Therefore, this evidence contradicts applicant’s contention because it shows the identified goods may relatively low-priced goods subject to impulse purchasing. The relevant standard of care for purchasing goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018).
This factor weighs in favor of finding there is a likelihood of confusion.
Conclusion
Where, as here, the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Considering the application and registration cover identical goods, together with the similarity of the marks, the channels of trade, and the sophistication of the least sophisticated purchasers, there is a likelihood that consumers will be confused as to the source or sponsorship of the goods offered under the respective marks. Therefore, the refusal to register the mark based on Section 2(d) is made FINAL.
RESPONSE GUIDELINES AND PARTIAL ABANDONMENT ADVISORY
In such case, the application will proceed for the International Classes 16, 18, and 28 only.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
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.
· /John LaMont/
· Examining Attorney
· Law Office 123
· (571) 270-0404
· john.lamont@uspto.gov
