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:

 

THIS IS A FINAL ACTION.

 

This final Office action is a response to applicant’s communication filed August 22, 2011.

 

STATUS

 

In a first Office action dated February 22, 2011, the examining attorney refused registration of applicant’s mark under Trademark Act Section 2(d), because the mark is confusingly similar to the mark found in U.S. Registration No. 3458406.  In its response, applicant set forth reasons as to why the Section 2(d) refusal should be withdrawn.

 

SECTION 2(d) REFUSAL IS MADE FINAL

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3458406.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods, and similarity of trade channels of the goods.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or 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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

In this case, applicant applied to register the mark CHRONOS.  Registrant’s mark is KRONOS.  The marks look the same, sound the same and convey the same commercial impression, that of the God of Time.

 

In its response, applicant argues that “the differences in visual appearance between the marks are apparent wherein Applicant’s mark is CHRONOS, and the prior mark is KRONOS.”

 

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 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.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

In this case, while a side-by-side comparison shows that the “K” sound in applicant’s mark is made with the letters “CH” and the “K” sound in registrant’s mark is made by the letter “K,” the test of confusion is not based on such a side-by-side comparison.  Using the correct test, that of whether the marks create the same overall commercial impression, it is clear that the marks both start with a “K” sound followed by the letters –RONOS, are therefore pronounced the same and convey the same meaning.  Evidence made of record by the examining attorney with the first Office action shows that CHRONOS and KRONOS are alternate spellings for the name of the Greek God of Time. 

 

Applicant argues that, “contrary to examiner’s proffered evidence, Applicant argues that the terms CHRONOS and KRONOS popularly refer to two distinct characters/concepts in Greek mythology.  The term KRONOS is commonly understood as referring to an alternate name for Cronus, a leader and member of the first generation of Titans . . . In contrast, Applicant notes that the term CHRONOS refers to the personification of time in general, and has no relation to anything specific person or character . . . Consequently, where CHRONOS and KRONOS are commonly understood to refer to distinct entities, consumers’ connotations of the marks are likely to be significantly different.”

 

Despite applicant’s claim to the contrary, the evidence made of record by applicant supports rather than rebuts a finding that the terms CHRONOS and KRONOS convey the same overall commercial impression.  The Wikipedia article on Cronus reads as follows:  “Cronus had been conflated with the name of Chronos, the personification of time in Classical Antiquity. In the Renaissance, the combination of Cronus and Chronos give rise to "Father Time" wielding the harvesting scythe.”  While this section of the Wikipedia article is not visible on the attachment made of record by applicant, it is visible on the attachment made of record by the examining attorney.  In addition, the helium.com online article on Chronos made of record by applicant states the following:  “During the Alexandrian period, when the Latin language was reborn, there has been a confusion of word ‘Cronos’ with the word ‘Chronos’, which in Greek means ‘time’.”

 

This evidence shows that there has been confusion between the Greek mythological figure (Cronus/Cronos/Kronos) and the Greek term for time (Chronos) for centuries, to the point where the two concepts conflated to result in a figure who personifies time.  The evidence also shows that the name for this God of Time can alternately be spelled as Chronos or Kronos.  Therefore, there really is no way for one to know whether the term CHRONOS used without context is meant to refer to the Greek concept of time or to “Father Time,” just as there is no way to know whether the term KRONOS used without context is meant to refer to the Greek titan or to “Father Time.”  In any case, the evidence shows that both terms are used to refer to the Personification of Time, the God of Time, or “Father Time,” however one wishes to identify the bearded figure wielding a scythe.  The marks, therefore, create the same overall commercial impression.

 

Comparison of the Goods

 

In this case, applicant has identified its goods as “clothing composed of denim material, namely, tops, bottoms, skirts, pants, underwear, footwear, headwear, dresses, jackets, coats, belts, neckwear, beachwear and sleepwear.”  Registrant’s goods are “sport shoes and leisure time footwear, namely, ski boots, cross country ski boots, after-ski shoes, tennis shoes, training shoes, athletic shoes, basketball shoes, volleyball shoes.”  Both marks identify footwear as well as other related clothing items.

 

Applicant argues that “where registrant offers various types of sports footwear, Applicant offers denim apparel.”

 

First, applicant does not only use its mark in connection with denim apparel, applicant also uses its mark to identify “footwear,” which is identical to the goods identified by registrant with its mark.  Second, even if applicant’s footwear is made of denim, there is nothing in registrant’s identification of goods that precludes registrant from making its footwear out of denim.  Third, even if applicant’s goods did not include footwear, there would be a likelihood of confusion because consumers are accustomed to seeing the same mark used on footwear as well as other types of clothing (it is noted that applicant itself uses its mark on footwear as well as other types of clothing).  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (women’s shoes related to outer shirts).

 

Finally, applicant argues that “even using a least knowledgeable general consumer standard, it is unlikely source confusion is likely to take place.  Where Applicant mark carries no express or implied association with the registrant’s mark, provides connotation entirely different from the registrant, and targets a distinct group of consumers, consumers should easily be able to differentiate Applicant’s mark as a unique source identifier.  Furthermore the lack of association between the marks reinforces the likelihood that the existence of Applicant’s mark is unlikely to cause any negative impact to the prior mark.”

 

As the examining attorney has shown, and despite applicant’s claim to the contrary, the connotation created by the marks is the same and the consumers of the goods are the same.  Applicant has failed to explain how any consumers, even “knowledgeable” consumers, “should easily be able to differentiate Applicant’s mark as a unique source identifier” when the marks look alike, are pronounced identically, identify the same mythological figure, and identify either identical or closely related goods.

 

Comparison of the Trade Channels

 

Applicant argues that “Applicant’s goods are intended primarily for fashion purposes and will be sold in predominant upscale outlets.  In contrast, registrant’s goods appear to be targeted towards athletic performance and therefore target a distinct group of athletic consumers.   Given such differences in targeted consumers, it is unlikely that consumers will encounter both goods and marks within the same retail space.”

 

Neither the application nor the registration contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also 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).

 

For the foregoing reasons, the refusal is maintained and made FINAL.

 

PROPER RESPONSE TO A FINAL OFFICE ACTION

 

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

QUESTIONS

 

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 §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals or requirements 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.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

John.Gartner@uspto.gov (informal correspondence)

 

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 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 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.