United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 79287885
Mark: MADRID
|
|
|
Correspondence Address: Fross Zelnick Lehrman & Zissu, P.C. 151 W. 42nd Street, 17th Floor
|
|
|
Applicant: Birkenstock UK Ltd.
|
|
|
Reference/Docket No. BSUK 2011129
Correspondence Email Address: |
|
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: March 18, 2021
International Registration No. 1536684
This Office action is in response to applicant’s communication filed on February 19, 2021.
In a previous Office action dated July 13, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to amend the identification of goods, provide information about the goods, provide an email address, and obtain a U.S. attorney.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification of goods, provide information about the goods, provide an email address, and obtain a U.S. attorney. See TMEP §§713.02, 714.04.
Further, applicant set forth arguments against the Section 2(d) refusal. Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below. Therefore, the trademark examining attorney maintains and now makes FINAL the partial refusal set forth below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3241061. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration for the mark MADRID.
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.
Facts
Applicant’s mark is MADRID for, in relevant part, “casual footwear not intended for any specific athletic use, in particular shoes, low shoes, lace-up shoes, flat shoes, sneakers, deck shoes, slippers, bath shoes, sandals, clogs, boots” in International Class 25.
Registrant’s mark is MADRID for “Footwear, namely shoes for use with skateboards” in International Class 25.
Similarity of the Marks
In the present case, applicant’s mark is MADRID and registrant’s mark is MADRID. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
In its Response, applicant argues that the registered mark MADRID is associated with a surname and would therefore convey a different meaning than applicant’s identical mark MADRID in relation to the goods. Yet, this argument is not convincing.
The marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Here, there is no indication in the record that suggests that the registered mark has a different meaning that applicant’s mark.
Therefore, the marks are confusingly similar.
Relatedness of Goods
When considering the relatedness of the goods of the parties for likelihood of confusion purposes, the goods are compared to determine whether they are similar, 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, 1207.01(a)(vi).
Here, applicant’s “casual footwear not intended for any specific athletic use, in particular shoes, low shoes, lace-up shoes, flat shoes, sneakers, deck shoes, slippers, bath shoes, sandals, clogs, boots” are related to the registrant’s “Footwear, namely shoes for use with skateboards” because entities commonly manufacture or provide footwear for use with sports (including skateboard footwear) as well as footwear not for use with sports or athletics. See attached evidence.
In its Response, applicant amended the identification of goods to narrow the scope of the goods. However, this limitation does not obviate the relatedness of the goods.
In addition to the previously attached evidence, 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 skateboard shoes and other casual or non-athletic related footwear, 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).
Moreover, applicant argues that the goods are sold in different trade channels, such that there would be no actual confusion. Yet, the attached Internet evidence establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark, and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, 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).
Specifically, the website evidence shows that skateboard shoes are commonly sold alongside footwear in all categories, including casual footwear, slippers, sandals, boots, low shoes, etc. See attached evidence.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording MADRID is weak or diluted.
Moreover, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). Here, the marks are identical.
Accordingly, the goods are related for likelihood of confusion purposes.
Conclusion
In conclusion, the two marks are identical and the evidence shows that the goods are related. Therefore, a likelihood of confusion as to the source of the goods exists, and registration must be refused under Section 2(d) of the Lanham Act.
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).
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Kim L. Parks/
Kimberly L. Parks
Trademark Examining Attorney
Law Office 112
571.272.6129
kimberly.parks@uspto.gov
RESPONSE GUIDANCE
