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. 79283763
Mark: AEON
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Correspondence Address: 2001 Market Street, Suite 2800
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Applicant: Ed. Wüsthof Dreizackwerk KG
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Reference/Docket No. 204070.0342
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: December 04, 2020
International Registration No. 1526238
This Office action is in response to applicant’s communication filed on 11/13/20.
In the first Office action, dated 05/14/20, the examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) based upon a finding of a likelihood of confusion with U.S. Registration Nos. 5301550 and 5830995. In addition, the examining attorney required applicant to amend the indefinite identification of goods (Applies to Specific Goods in Classes 08 & 21 ONLY). Finally, the examining attorney required applicant to appoint a U.S.-licensed attorney to represent it before the USPTO.
In its response, dated 11/13/20, applicant appointed a U.S.-licensed attorney to represent it before the USPTO. Accordingly, the requirement entitled “U.S.-licensed Attorney Required” is satisfied. In addition, in its response, applicant amended the identification of goods. The examining attorney accepts applicant’s amendment of the identification of goods and hereby makes it of record. Accordingly, the requirement for an acceptable amendment of the identification of goods is satisfied. Finally, in its response, applicant submitted arguments against the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration Nos. 5301550 and 5830995. As a preliminary matter, the examining attorney finds applicant’s arguments persuasive only as they pertain to cited U.S. Registration No. 5830995. Accordingly, the Trademark Act Section 2(d) refusal with U.S. Registration No. 5830995 is hereby withdrawn. However, the examining attorney does not find applicant’s arguments persuasive as they pertain to cited U.S. Registration No. 5301550. Accordingly, the examining attorney continues and maintains the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 5301550 and hereby makes said refusal FINAL.
FINAL REFUSAL - Section 2(d) Likelihood of Confusion Refusal
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.
Comparison 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) (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).
In this case, applicant’s mark is AEON (standard character) for amended goods listed as “Kitchen knives and cutting tools in the nature of cutlery; butcher knives; kitchen knives; chef knives; cleavers; cheese knives; peeling knives; Japanese chopping kitchen knives; hand operated knives, namely, vegetable peelers; non electric potato peelers being knives; carving knives; hand operated choppers; steak knives” in International Class 08.
Registrant, Yuanyuan Chen, owns a registration for the following mark:
AEONTEK (standard character) for goods listed as “Cooking pot sets; Electric combs; Electric face cleansing brushes; Electric hot brushes; Fruit presses, non-electric, for household purposes; Hot air hair brushes; Non-electric food blenders; Toothbrushes; Toothbrushes, electric; Water apparatus for cleaning teeth and gums for home use” in International Class 21.
Analysis
Here, applicant’s mark and registrant’s mark share an identical dominant portion, namely, the first and/or only term “AEON”. As such, the marks are confusingly similar in sound, appearance, meaning, connotation and commercial impression. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Furthermore, the examining attorney points out that applicant’s mere deletion of the term “TEK” from registrant’s mark, is not sufficient to obviate a finding of a likelihood of confusion under Trademark Act Section 2(d). Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Applicant’s Arguments in Response, Dated 11/13/20
In its response, applicant argues that its mark is distinguishable from registrant’s mark. More specifically, applicant explains that the applied-for mark “AEON” is a single word, spoken as two syllables and visually lacking any stylization or design elements. Applicant submits that the mark could be understood to mean an “eon” or an immeasurably long period of time. As such, applicant argues that the mark could convey the idea that applicant’s knives are made out of millennia-old bog oak and are of such good quality that they will last a very long while. In contrast, applicant explains that registrant’s mark “AEONTEK” appears as a composite of two words, “AEON” and “TEK”. The addition of the term “TEK,” pronounced identically to the word “TECH,” is an important and significant one, as it conveys that the goods offered in association with registrant’s mark involve some special technology that somehow makes them more advanced or special that competitive products. Applicant argues that the mark does not look like nor sound like applicant’s mark, and clearly has a different connotation and commercial impression.
Examining Attorney’s Rebuttal
The examining attorney has carefully reviewed and considered applicant’s arguments and is not persuaded. The term “AEON” is the dominant and/or only source-indicating portion of both applicant’s mark and registrant’s mark. Applicant’s mere deletion of the merely descriptive term “TEK” (a novel or intentional misspelling of the term “TECH”), is not sufficient to obviate a finding of a likelihood of confusion under Trademark Act Section 2(d). A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).
The examining attorney has attached to the instant Office action, a number of third-party registrations wherein the term “TECH” is routinely disclaimed for goods similar to those set forth in the cited registration. Please see attached third-party registrations. Third-party registrations featuring goods the same as or similar to registrant’s goods are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Furthermore, applicant’s argument that the applied-for mark could convey the idea that applicant’s knives are made out of millennia-old bog oak and are of such good quality that they will last a very long while, is equally applicable to registrant’s goods which could be perceived as of such a good quality that they will last a very long while. As such, the average consumer, who retains a general impression of trademarks, will likely not discern any appreciable difference in the commercial impression imparted by the identical distinctive term “AEON” appearing in the respective marks.
Accordingly, applicant’s mark and registrant’s mark are sufficiently similar, such that consumer confusion in the marketplace is likely.
Comparison of the Goods
In this case, applicant’s goods listed as “Kitchen knives and cutting tools in the nature of cutlery; butcher knives; kitchen knives; chef knives; cleavers; cheese knives; peeling knives; Japanese chopping kitchen knives; hand operated knives, namely, vegetable peelers; non electric potato peelers being knives; carving knives; hand operated choppers; steak knives” in International Class 08 are related to registrant’s goods listed as “Cooking pot sets; Electric combs; Electric face cleansing brushes; Electric hot brushes; Fruit presses, non-electric, for household purposes; Hot air hair brushes; Non-electric food blenders; Toothbrushes; Toothbrushes, electric; Water apparatus for cleaning teeth and gums for home use” in International Class 21, as both sets of goods feature kitchen implements and tools, such as “Kitchen knives,” “Cutlery,” “Cooking pot sets,” “Fruit presses, non-electric, for household purposes” and “Non-electric food blenders,” which are manufactured and marketed to consumers under the same name.
Applicant’s Arguments in Response, Dated 11/13/20
In its response, dated 11/13/20, applicant argues that the goods offered under the respective marks are so different that confusion is not likely. First applicant has deleted from its application International Class 21 in its entirety, and also deleted “food preparation implements” in International Class 08. As such, applicant points out that there is no longer overlap in goods.
Next, applicant argues that despite the examining attorney’s rationale that the remainder of applicant’s goods in International Class 08 are related to registrant’s goods, as both sets of goods feature food preparation products encountered by consumers in the same channels of trade, a likelihood of confusion cannot be premised on the fact that the goods all fall into the same very broad category of food preparation products and that said goods might be purchased in a similar location.
Rather, applicant explains that its amendments to the identification of goods clarify that applicant only seeks registration of the mark on kitchen and cutting knives in Class 08. Applicant points
out that these are very specific goods intended for a particular purpose, such that they would be purchased by consumers who would carefully consider the product before purchase. Applicant argues
that its knives are not the same as nor even competitive with the cited “cooking pot sets,” “fruit pressed, non-electric, for household purposes”. Accordingly, applicant submits that the goods are
not so related that consumers would assumed they all emanate from the same source.
Examining Attorney’s Rebuttal
The examining attorney has carefully reviewed and considered applicant’s arguments against the finding that applicant’s goods and registrant’s goods are related and is not persuaded. As a preliminary matter, the examining attorney points out that 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); 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). As such, applicant’s argument that its goods and registrant’s goods are not the same or even competitive is not determinative or dispositive as to whether the goods of the parties are related. Rather, the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods emanate from the same manufacturer of kitchen food preparation products, which are encountered by consumers in the same channels of trade.
Third-Party Registrations Suggest Goods May Emanate from Single Source
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 as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely, “Kitchen knives,” “Table cutlery,” “Cooking pot sets,” “Fruit presses, non-electric, for household purposes” and “Non-electric food blenders,” are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); 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).
Finally, with regard to applicant’s argument that the sophistication of the purchasers in the instant case weighs against a finding of a likelihood of confusion, the examining attorney respectfully disagrees. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Therefore, confusion is likely, as consumers would believe that both applicant’s goods and registrant’s goods emanate from a single source. Accordingly, registration is refused under Trademark Act Section 2(d) and said refusal is hereby made FINAL.
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).
/Brian P. Callaghan/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4906
Email: brian.callaghan@uspto.gov
RESPONSE GUIDANCE
