Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 02, 2021

 

 This FINAL Office action is in response to the applicant’s communication dated October 15, 2019 in which the applicant:

 

1. Asserted that the applicant had instituted cancellation proceedings against U.S. Registration Nos. 5514369 and 5299501 (Cancellation No. 92072689).

 

The examining attorney has reviewed the communication and determined the following:

 

1.     On September 29, 2020, Cancellation No. 92072689 was denied with prejudice.  Therefore, the Section 2(d) Refusal for a likelihood of confusion with U.S. Registration Nos. 5514369 and 5299501 is maintained and 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 Nos. 5514369 and 5299501.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5514369 and 5299501.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Applicant’s mark is XTREME for “Engine oils; Gear oils; Hydraulic oils”. 

 

U.S. Registration No. 5299501 is EXTREME RACING OIL for “motor oil”.

 

U.S. Registration No. 5514369 is EXTREME BRAND PRODUCTS for “racing fuels and racing oils for drag and stock cars”

 

Similarity 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).

 

In this case, the applicant’s mark is similar in sound, appearance, connotation, and commercial impression.  The first wording in the registered marks is “EXTREME”.  The wording in the applied-for mark is “XTREME”.  The wording “XTREME” is commonly understood to be a slang term or a misspelling of the wording “EXTREME”, the wording in the registered mark.  See evidence at http://www.thefreedictionary.com/Xtreme#:~:text=1.,3., http://www.noslang.com/search/xtreme, http://acronymsandslang.com/definition/6888586/xtreme-meaning.html, and http://www.allacronyms.com/XTREME.  Because the wording in the applied-for mark is commonly understood as a slang version or misspelling of the first wording in the registered marks, the wording is similar in sound and appearance.

 

Moreover, the wording “XTREME” and “EXTREME” share the same connotation and commercial impression.  Since the wording “XTREME” is merely a slang version of the wording “EXTREME”, both words have the same connotation, namely, that of being a great degree or being of great intensity.  See dictionary evidence at http://www.lexico.com/en/definition/extreme, http://www.collinsdictionary.com/dictionary/english/extreme, and http://en.wiktionary.org/wiki/extreme.  Subsequently, the wording creates the same commercial impression when used in connection to engine oils, gear oils, hydraulic oils, motor oils, racing fuels and racing oils, namely, that the use of the oils and fuels in vehicles will allow the vehicle to work to a greater or more intense degree, or that the oils and fuels are able to withstand the most intense circumstances. 

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Therefore, when consumers focus on the first wording in the applied-for and registered marks, consumers will be focusing on the same wording that creates the same 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  In this case, the wording “RACING OIL” in U.S. Registration No. 5299501 and the wording “BRAND PRODUCTS” in U.S. Registration No. 5514369 have been disclaimed because they are descriptive of the registrant’s products. 

 

Moreover, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  In this case, consumers are going to rely on the wording in the applied-for and registered marks when searching for the applicant’s and registrant’s goods online, as well as when requesting the goods in a store. 

 

Because the marks are similar in sound, appearance and commercial impression, the marks are confusingly similar. 

 

Relatedness of the Goods

 

The compared goods and/or services 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).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “engine oil,” which presumably encompasses all goods of the type described, including registrant’s more narrow racing oils and motor oils  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Specifically, the wording “motor oil” and “engine oil” are often used interchangeably.  See evidence at http://en.wikipedia.org/wiki/Motor_oil, http://www.quora.com/What-is-the-difference-between-motor-and-engine-oil#:~:text=%E2%80%9CMotor%20oil%E2%80%9D%20is%20the%20common,used%20in%20an%20automobile%20engine.&text=If%20you%20used%20the%20term,from%20another%20English%2Dspeaking%20country., http://www.castrol.com/en_us/united-states/home/motor-oil-and-fluids/engine-oils.html, and http://www.columbiatireauto.com/Blog/ID/249/Motor-Oil-and-How-it-Can-Affect-Your-Engines-Performance.  Additionally, “racing oils” are commonly advertised and understood to be an “engine oil.”  See evidence of various types of “racing engine oil” at http://lucasoil.com/products/racing-only/racing-engine-oil, http://www.enginelabs.com/tech-stories/racing-oil-vs-street-oil-know-the-differences/, http://blog.amsoil.com/racing-oil-vs-regular-oil-whats-the-difference/, and http://www.rymax-lubricants.com/updates/what-is-the-difference-between-racing-engine-oil-and-normal-street-engine-oil/.  Thus, the engine oil identified by the applicant encompasses the goods identified by the registrant. 

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

Moreover, a number of third parties provide “motor oils,” “gear oils,” and “hydraulic oil” under the same marks and through the same trade channels.  See evidence at http://www.uslube.com/MSDS.html (providing motor oils, gear oils, and hydraulic oils all under the US LUBRICANTS mark and providing them through the same trade channels), http://hydrosafe.com/products/ (providing motor and engine oils, gear oils, and hydraulic oils under the HYDRO SAFE mark), http://majesticlubricants.com/technical-data-sheet/ (offering motor oils, engine oils, and hydraulic oils under the same marks and providing them through the same trade channels), http://oilmiami.com/ (selling, manufacturing, and exporting hydraulic oils, gear oils, and engine oil under the MIAMI OIL COMPANY), http://www.mfaoil.com/oils-lubricants/work-horse/ (providing engine oils, gear oils, and hydraulic oils under the MFA OIL and WORKHORSE marks), http://enhanceoil.com/ (providing engine oil, motor oil, gear oil, and hydraulic oil under the ENHANCE mark), and http://petromericaoil.com/ (offering gear oil, motor oil, and hydraulic oil under the PETROMERICA mark). 

 

The trademark examining attorney has also 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 and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely, engine oils, motor oils, gear oils, and hydraulic oils, 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).

 

See U.S. Registration Nos.:  4862232, 5062341, 4894948, 4776507, 4667570, 4627063, 4310550, 4642029, 4118282, 3848805, 3846374, 3812832, 4091506, 3771895, and 1522333. 

 

Because the goods identified by the applicant are either encompassing of the goods identified by the registrant or commonly provided by the same parties under the same marks, the goods are considered related. 

 

Because the applicant’s mark is confusingly similar to the registrant’s mark, and because the applicant’s goods are related to the goods of the registrant, a likelihood of confusion exists and the refusal to register pursuant to Section 2(d) of the Trademark Act is maintained and made FINAL.  

 

RESPONSE GUIDELINES FOR FINAL REFUSAL

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

 

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).

 

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).

 

 

/Mark S. Tratos/

Mark S. Tratos

Trademark Examining Attorney

Law Office 113

(571) 270-3575

Mark.Tratos@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 02, 2021 for

U.S. Trademark Application Serial No. 87324488

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Mark S. Tratos/

Mark S. Tratos

Trademark Examining Attorney

Law Office 113

(571) 270-3575

Mark.Tratos@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 02, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”