UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87083587
MARK: ZONE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Bell Sports, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/24/2017
THIS IS A FINAL ACTION.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
This FINAL Office Action is in response to Applicant’s communication filed on April 3, 2017. On October 3, 2016, the examining attorney refused registration to applicant’s mark pursuant to Section 2(d) of the Trademark Act. The specimen submitted with the application was also refused.
In its response, Applicant argues that the marks are not likely to engender confusion among consumers. The examining attorney has considered Applicant’s response and finds it unpersuasive.
Applicant has also submitted substitute specimens that are acceptable. That refusal is withdrawn.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 3880695, 4147252 and 4642318. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
LIKELIHOOD OF CONFUSION - SECTION 2(d) REFUSAL – IN PART
Registration of the applied-for mark is again refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3880695, 4147252 and 4642318. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registrations attached to the initial office action. Please note that Reg. Nos. 3880695 and 4147252 are owned by the same entity.
As stated in the initial office action, 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
SIMILARITY OF THE MARKS
As previously stated, 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, the examining attorney continues to believe that the marks are highly similar.
Reg. Nos. 3880695 and 4147252
With respect to Reg. Nos. 3880695 and 4147252, Registrant’s mark is ZOAN while Applicant’s mark is ZONE. The examining attorney continues to believe that the marks create an overall similar commercial impression because they are spelled similarly, will sound similar and look almost identical.
First, both marks consist solely of four letters with the first letter being a “z”. Second, Applicant’s mark combines the letters “o” and “e,” pronounced as a long “o” sound, followed by the letter “n”. With respect to Registrant’s mark, it follows the “z” with the letters “oa,” which also is pronounced as a long “o” sound, and with the letter “n” at the end of the mark. See attached evidence discussing the correct way to pronounce the letters “oa” and “o-e”.
Therefore, the examining attorney continues to believe that when consumers encounter Registrant’s mark they will pronounce it similarly, if not identically, to the way they would pronounce Applicant’s mark, namely the letter “z,” followed by a long “o” vowel sound, and ending with the letter “n.” The marks are essentially phonetic equivalents and thus sound similar. As courts have held, similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
In its response, Applicant argues that the marks are commercially different because “ZOAN is a fanciful word that has no dictionary meaning,” while Applicant’s mark “is a known word with known connotation and meaning. Ordinary consumers will recognize this in viewing the marks…” and will remember these differences. The examining attorney has considered this argument and finds it unpersuasive.
In this case, the examining attorney believes that the highly similar, if not identical, sound and pronunciation produced by the marks is more likely to be recalled by consumers then the differences in spelling and the fact that Registrant’s mark may, indeed, be fanciful.
Reg. No. 4642318
With respect to Reg. No. 4642318, Registrant’s mark is ZONEINC while Applicant’s mark, again, is ZONE. In this case, it can be argued that Applicant appropriated Registrant’s mark wholesale and merely deleted the lettering INC, which itself merely identifies an entity designation. Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.
Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
In its response, Applicant argues that the marks do not create a similar commercial impression mainly because Registrant’s mark includes the lettering INC and this lettering is combined with the term ZONE to create a unitary mark. The examining attorney has considered these arguments and finds them unpersuasive.
As previously stated, the term ZONE is the first term and that consumers will encounter in both marks, and actually the only term in applicant’s mark, and, therefore, more likely to be recall by consumers. Second, the fact that the terms in Registrant’s mark appears in unitary form does not obviate the fact that the term ZONE is the dominant term in the marks at issue and that the lettering INC represents an entity designation that does not have any significance as an identifier of source.
Lastly, as stated previously, while Registrant’s marks does include the lettering INC, the examining attorney believes that the term ZONE has a great deal of dominance as it represents an inherently distinctive element in the marks. At the same time, the term ZONE is the sole element in Applicant’s mark, which naturally leads to the conclusion that this term is singular in dominance therein.
In all, the examining attorney continues to believe that the marks are highly similar in appearance, sound and overall commercial impression.
SIMILARITY OF THE GOODS
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the examining attorney continues to believe that the parties’ goods are highly similar for the reasons stated below.
Specifically, Applicant’s goods, as amended, are identified as follows:
Class 9 - Bicycle helmets; Ski helmets; Snowboard helmets
Reg. Nos. 3880695 and 4147252
The goods for Reg. Nos. 3880695 and 4147252 are identified as follows:
Reg. No. 3880695 – Class 9 - helmets for power sports, namely, motorcycle helmets, snowmobile helmets, all-terrain vehicle helmets
Reg. No. 4147252 – Class 9 - Goggles, namely, goggles for motorcycling and snowmobiling; Class 25 - Snowmobile clothing, namely, jackets and pants
Even with the amendment to the identification of goods, the examining attorney believes that the parties’ helmets are related and normally sold through the same channels of commerce and by the same manufacturers. First, both parties’ helmets are intended to be used for similar sports/activities – on snow and on the road. It is not as if Applicant is using its mark in connection with football helmets, while Registrant is using its mark on bicycle helmets, which in theory could be seen as sufficiently different. Rather the parties’ goods are being used in connection with helmets for similar sporting activities.
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
In particular, the examining attorney calls Applicant’s attention to Bell and O’Neal, companies that manufacture both types of helmets. Furthermore, it is clear from the attached evidence that participants in the sports of BMX and mountain biking normally wear full face protection motorcycle helmets while competing. See numerous photographs and webpages, including an interview discussing same. In fact, Applicant’s own website shows that is sells a variety of bike helmets, with a few greatly resembling those used for motorcycle sports.
As for the snowmobile helmets, the examining attorney has attached an article discussing the similarities of motorcycle and snowmobile helmets and that consumers commonly interchange one for the other. See article from Gone Outdoors.
With respect to the goggles identified in the other registration, the attached evidence from Applicant’s own website shows that manufacturers of these types of helmets also commonly manufacture goggles under the same name. See attached. Furthermore, where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). The photographs attached to this office action also clear demonstrate that consumers who partake in bike racing, motorcycle racing and snowmobiling commonly, if not universally, wear goggles to protect their eyes.
In its response, Applicant argues that the parties’ helmets are different since Applicant’s helmets are used for non-motorized sports, while Registrant’s goods are intended to be used only for power motorsports. Applicant goes on to argue that “[a]ll of these are motor driven vehicles and is considered by the industry to be an industry separate from the non-motorized sports (bicycling, snowboarding, skiing). The industry safety regulations are different for the two industries, the equipment, and particularly the helmet equipment, is very different, and consumers of motorsports helmets would not assume that the non-motorsports helmets are the same.” As a result, the “two distinct helmet types are not marketed to the same customers or even in the same magazines or in the same areas of sporting goods stores. In the bicycling world, these are separate markets with separate customers. The two products are entirely different and do not compete with each other in their respective markets.” The examining attorney has considered these arguments and finds them unpersuasive.
The examining attorney believes that the above-described evidence makes clear that helmets for bike riding and motorcycle riding, as well as skiing and snowboarding do overlap in terms of trade channels. First, the attached third party registrations show that manufacturers typically use the same mark as all different types of bicycle and motorcycle helmets. Second, Applicant’s position appears to take the position that its bicycle helmets cannot be used for motorized sports and vice-versa. The examining attorney disagrees with this argument for two main reasons. First, the evidence points to the fact that racing helmets - those with a larger frame, a visor, chin protector and with multiple layers - whether BMX, motorcycling or snowmobiling, are all highly similar, if not identical, and according to some extent interchangeable. Second, while Applicant argues that “consumers of motorsports helmets would not assume that the non-motorsports helmets are the same,” it has not provided any evidence to substantiate that point, nor has applicant provided any evidence that consumers of different types of helmets are sophisticated.
Even if some consumers are sophisticated and would be able to tell the difference between the helmets, when the relevant consumer includes both professionals and the general public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014); Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). Along those same lines, Applicant takes the position that confusion is unlikely because the products are expensive. While goggles and helmets could cost between $100-$200, there is no evidence in the record to suggest that this would be considered expensive. Even if consumers of the compared goods and/or services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
In light of this evidence, the examining attorney believes that Applicant’s goods are highly related to those identified in Reg. Nos. 3880695 and 4147252.
Reg. No. 4642318
The goods identified in Reg. No. 4642318 are identified, in relevant part, as: eye shields being protective sports helmet accessories that attach to helmets, goggles for sports.
Applicant argues that registrant’s goods and its products are different and that consumers are sufficiently sophisticated so as to obviate the likelihood of confusion. The examining attorney is not persuaded. First, since registrant used broad wording to describe its goods, the examining attorney must assume that its eye shields for helmets and its goggles could be used in connection with biking, skiing and snowboarding, the activities identified in the application. The attached evidence, including from Applicant’s own website, shows that companies in the ski and snowboard space typically manufacture both helmets and goggles and use the same mark in connection with both. See attached from POC, Smith, and Bolle.
Therefore, the goods overlap in that they are normally used in conjunction with one another and have complementary uses. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565. As for the sophistication of consumers, the examining attorney reiterates its above-discussed position that Applicant failed to provide any evidence that its consumers are particularly sophisticated or discerning, as opposed to a typical consumer who not only wants a product to protect them from injury but also seeks a device that fits well and is stylish. Even Applicant markets its goggles as being both safe and stylish. See attached from giro.com.
As a result, the examining attorney continues to believe that the goods and services are related which creates a likelihood of confusion among consumers.
Conclusion
In conclusion, registration of the mark is refused under Section 2(d) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Response Guidelines
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
/Alain J. Lapter/
Trademark Examining Attorney
Law Office 105
500 Dulany Ave.
Alexandria, VA 22316
(571) 272-3162
alain.lapter@uspto.gov
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 the Trademark Electronic Application System (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.
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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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
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