UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION ABOUT TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE DATE.

 

ISSUE/MAILING DATE: 1/10/2011

 

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 (2010), and has determined the following:

REGISTRATION REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed a use-based application, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2006), seeking federal protection to use the mark “NIKO” on September 24, 2010. 

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. 1,322,693, issued on February 26, 1985, with its first renewal issued on March 13, 2005, and U.S. Registration No. 3,016,828, issued on November 22, 2005 (copies are attached hereto).  Id. § 1052(d); see TMEP § 1207.01. 

Applicant has applied to register the mark “NIKO” for use in the sale and advertising of “restaurant and bar services” in International Class 43. 

The cited registered marks are (1) “NIKKO,” with the English translation of the Japanese wording provided as “sun’s rays,” used in the sale and advertising of “restaurant services,” protected by U.S. Registration No. 1,322,693, and (2) “NIKO NIKO'S,” used in the sale and advertising of “restaurant services,” protected by U.S. Registration No. 3,016,828.

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 services [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)).

Test for Similarity Comparing “NIKO” and “NIKKO”

In the present case, Applicant’s applied-for mark, “NIKO,” is depicted with a standard character claim.  The registered mark protected by U.S. Registration No. 1,322,693, “NIKKO,” is depicted with typeset lettering, the standard character claim equivalent. 

In comparison, the marks are phonetic equivalents.  The sole difference in the appearance of the marks is that the registered mark contains two of the letter “K,” while the proposed mark contains only one.  As for meaning, the registered mark is the Japanese-language equivalent of sunlight or sunray, and while Applicant has not indicated that the term has any specify meaning, it has many meanings, including the nickname for the male given name “Nicolas” in Greek, a common male given name in Croatian and Finnish, and it appears to be the Japanese-language equivalent of the word for a smile.  See attached evidence.

The marks would likely create nearly identical commercial impressions, particularly for consumers who have only heard of the registered mark, NIKKO, such as through word‑of‑mouth dining recommendations.  For example, if “NIKKO” restaurant services are suggested by word of mouth to a potential patron, and that person sees “NIKO” advertising for restaurant services, that potential purchaser would likely believe that the latter mark was the recommended source of services based on the similarity of the marks and due to confusion stemming from the strong similarities of the marks.  Thus, while Applicant may “not seek to benefit from the goodwill of the senior user[, . . .] the senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user.”  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 U.S.P.Q.2d 1687, 1690 (Fed. Cir. 1993). 

Viewed in their entireties with the differences weighed, the marks are identical in sound, nearly identical in appearance, and would create nearly identical 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 between Applicant’s proposed mark and the mark protected by U.S. Registration No. 1,322,693.    

Test for Similarity Comparing “NIKO” and “NIKO NIKO'S”

Overall “ ‘commercial impression’ is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning.”  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); see, e.g., Andrew Jergens Co. v. Sween Corp., 229 U.S.P.Q. 394, 395–96 (TTAB 1986); see Money Station Inc. v. Cash Station Inc., 70 F.3d 1290, 38 U.S.P.Q.2d 1150, 1154 (Fed. Cir. 1995) (holding that MONEY STATION and CASH STATION are confusingly similar as applied to the services specified in its application); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 355, 22 U.S.P.Q.2d 1453, 1458 (Fed. Cir. 1992) (holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks); Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561, 562, 189 U.S.P.Q. 413, 414 (C.C.P.A. 1976) (holding that RAINFRESH is confusingly similar to RAIN BARREL given the close relationship of the goods and "similarity of commercial impressions").

In the present case, Applicant’s applied-for mark, “NIKO,” and the registered mark protected by U.S. Registration No. 3,016,828, “NIKO NIKO'S,” are both depicted with standard character claims.  The marks share the identical first term “NIKO.” 

The sole differing element of the registered mark is the repetition of the term “NIKO” in possessive form.  Even though “NIKO” and “NIKO NIKO'S” do not share the exact appearance or sound, the dominance of the term NIKO in the registered mark engenders strongly similar overall commercial impressions of the two marks, and the overall commercial impression of these terms is a proxy in this comparison.  

Consequently, the marks appear nearly identical, sound nearly identical, and would create nearly identical 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 between Applicant’s proposed mark and the mark protected by U.S. Registration No. 3,016,828.    

RELATEDNESS OF THE SERVICES

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).  “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002).  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 services, “restaurant and bar services,” and the identical recited services used in connection with the federally protected marks in U.S. Registration Nos. 1,322,693 and 3,016,828, to wit, “restaurant services,” consist of identical services and highly related bar services.  Based on the application and registration, there are no limitations as to channels of trade or class of purchasers; therefore, it must be presumed that these dining services would be commercially available and marketed without limitation and would be available to the general public without restriction.  TMEP § 1207.01(a)(iii). 

Therefore, the respective services 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 services 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 this Office Action, Applicant must also respond to the following:

GENERAL INQUIRY ON SIGNIFICANCE OF MARK

Applicant must specify whether “NIKO” has any meaning or significance as applied to the identified services.  37 C.F.R. § 2.61(b); TMEP §§ 808.01(a), 814. 

In addition, all foreign wording in a mark must be translated for the record.  37 C.F.R. §§ 2.32(a), 2.61(b); see TMEP § 809.  Applicant must specify whether the term “NIKO” has any meaning in a foreign language.  37 C.F.R. § 2.61(b); TMEP § 809.01.  The attached evidence supports a determination that the English-language equivalent of the Japanese term “NIKO” is “smile,” but the term has other meanings and connotations, as well.  If applicable, Applicant must submit an English translation of any foreign wording in the mark.  TMEP § 809.

The following translation statement is suggested: 

The English translation of the Japanese-language transliteration “NIKO” is “SMILE.”

37 C.F.R. §§ 2.32(a)(9), 2.61(b); see TMEP § 809.03.

advisory regarding counsel

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. § 2.11.  Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local Bar Association attorney-referral service.

TEAS PLUS APPLICANT ADVISORY

 

To retain TEAS Plus status, APPLICANT MUST SUBMIT AND ACCEPT DOCUMENTS ELECTRONICALLY OR APPLICANT WILL BE REQUIRED TO SUBMIT ADDITIONAL PROCESSING FEE.

 

As a reduced-fee TEAS Plus applicant, you must submit certain documents electronically, including any response to this Office Action.  For a complete list of these documents, please see TMEP § 819.02(b), at http://tess2.gov.uspto.report/tmdb/TMEP /0800.htm#_T81902b.   

 

If any of the above documents are filed by paper instead of via TEAS, Applicant must also submit an additional processing fee of $50 per each class of goods and services.  37 C.F.R. §§ 2.6(a)(1)(iv); TMEP § 819.04.  To avoid the additional processing fee, Applicant must also accept correspondence from the Office via e-mail throughout the examination process and maintain a valid e-mail address.  37 C.F.R. § 2.23(a)(2); TMEP §§ 819, 819.02(a).  Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee.

 

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

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using 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 examining attorney.  Do not respond to this Office action by e‑mail; 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.

 

WHO MUST SIGN THE RESPONSE:  Any response must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (e.g., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant. 

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85137271) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 1/10/2011 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

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

 

2. Respond within 6 months, calculated from 1/10/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

USPTO - Trademarks

Law Office 114

(571) 272-5892 direct line

 

WARNING

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

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, please use the Trademark Electronic Application System Response to Office Action form.