To: | Mitsui & Co., Ltd. (bassam.ibrahim@bipc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87376087 - SHIELD - 0073865-046 - Request for Reconsideration Denied - Return to TTAB |
Sent: | 9/4/2018 9:27:24 AM |
Sent As: | ECOM125@USPTO.GOV |
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87376087
MARK: SHIELD
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Mitsui & Co., Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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REQUEST FOR RECONSIDERATION DENIED
ISSUE/MAILING DATE: 9/4/2018
The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a). The following refusal made final in the Office action dated January 12, 2018 is maintained and continue to be final: Likelihood of Confusion Refusal—Trademark Act Section 2(d) with the mark in U.S. Registration No. 4808805. See TMEP §§715.03(a)(ii)(B), 715.04(a).
In the present case, applicant’s request has not resolved all the outstanding issues, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Accordingly, the request is denied.
If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Standard of Analysis for Section 2(d) Refusal
Applicant’s mark is “SHIELD”, now amended, for “waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bags” in International Class 024.
Registrant’s mark is “SHIELD CLASSIC” for “Textiles and textile goods, namely, fabrics, cotton fabrics, felt fabrics, faux suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics; upholstery materials, namely, fabrics, cotton fabrics, felt fabrics, suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics; materials for covering walls, namely, textile and fabric wall hangings; materials for soft furnishings, namely, textiles and fabrics for the further manufacture of soft furnishings; curtain materials of fabric and textile; fabrics for the manufacture of upholstered goods; flame retardant fabrics for the further manufacture of upholstered goods; waterproof fabrics for the further manufacture of upholstered goods; water resistant fabrics for the further manufacture of upholstered goods; laminated fabrics for the further manufacture of upholstered goods; vinyl cloth for use in the manufacture of upholstered goods; plastic substitutes for fabrics in the nature of vinyl fabric for use in the manufacture of upholstered items; upholstery fabrics; fabrics for the further manufacture of wall coverings; fabrics for furnishings; fabrics for soft furnishings; fabrics for seating areas, namely, for the further manufacture of furniture; curtain fabrics; soft furnishings, namely, curtains, cushion covers, bed sheets, duvet covers, pillow covers, bed blankets, blanket throws, lap blankets, travelling blankets, throws, coverlets; curtains; curtains of textile material; curtains made of plastics; shower curtains; door curtains in the nature of fabric curtains for separating rooms; fabric curtains for cubicles; fabric curtains for hospital cubicles; replacement parts for the aforesaid goods” in International Class 024.
As discussed in the previous Office Actions, Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.
Comparison of the Marks:
In the present case, applicant’s mark is SHIELD and registrant’s mark is SHIELD CLASSIC. Here, both marks share the wording SHIELD. Applicant argues in its July 7, 2018 Request for Reconsideration, that the marks are significantly different from one another in both appearance and overall commercial impression. The applicant argues that the term “CLASSIC” in registration’s mark is sufficient to distinguish the marks and prevent confusion. The trademark examining attorney has considered applicant’s arguments and have found them unpersuasive.
Although the cited registration contains the term CLASSIC as part of its mark, this sole distinction is not enough to obviate the likelihood of confusion between the two marks. As discussed in the January 12, 2018 Office Action, even though applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Furthermore, the term CLASSIC in the registered mark is a highly descriptive or even generic term in the mark and has therefore been disclaimed. Specifically, the attached evidence indicates that the term “CLASSIC” may refer to “[f]ormal, refined, and restrained in style” or “simple and harmonious; elegant.” When used in connection with registrant’s identified goods “classic” merely describes the style of the textile and textile goods as being refined and/or restrained in style, traditional, etc. 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. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
As indicated above, registrant’s mark contains the disclaimed wording “CLASSIC” and this term is descriptive for the registrant’s goods; thus, it is the less dominant portion of the mark, leaving the term “SHIELD” as the dominant portion of the mark. Herein, the dominant portion of registrant’s mark, “SHIELD,” is identical to applicant’s mark, “SHIELD”, and thus the two marks are confusingly similar.
Applicant argues that the addition of the term “CLASSIC” to registrant’s mark creates a different commercial impression when compared to applicant’s mark. However, as explained above, although the marks are compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Here, the term “SHIELD” is the dominant term in registrant’s mark and is identical to applicant’s applied-for mark and creates a similar commercial impression. Further, as explained above, applicant’s mark simply deletes the merely descriptive term “CLASSIC” to create its own mark. Thus, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.
Therefore, the marks are confusingly similar.
Comparison of Goods
In its July 12, 2018 Request for Reconsideration, the applicant has amended its goods to “waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bags”.
Registrant’s goods are “Textiles and textile goods, namely, fabrics, cotton fabrics, felt fabrics, faux suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics; upholstery materials, namely, fabrics, cotton fabrics, felt fabrics, suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics; materials for covering walls, namely, textile and fabric wall hangings; materials for soft furnishings, namely, textiles and fabrics for the further manufacture of soft furnishings; curtain materials of fabric and textile; fabrics for the manufacture of upholstered goods; flame retardant fabrics for the further manufacture of upholstered goods; waterproof fabrics for the further manufacture of upholstered goods; water resistant fabrics for the further manufacture of upholstered goods; laminated fabrics for the further manufacture of upholstered goods; vinyl cloth for use in the manufacture of upholstered goods; plastic substitutes for fabrics in the nature of vinyl fabric for use in the manufacture of upholstered items; upholstery fabrics; fabrics for the further manufacture of wall coverings; fabrics for furnishings; fabrics for soft furnishings; fabrics for seating areas, namely, for the further manufacture of furniture; curtain fabrics; soft furnishings, namely, curtains, cushion covers, bed sheets, duvet covers, pillow covers, bed blankets, blanket throws, lap blankets, travelling blankets, throws, coverlets; curtains; curtains of textile material; curtains made of plastics; shower curtains; door curtains in the nature of fabric curtains for separating rooms; fabric curtains for cubicles; fabric curtains for hospital cubicles; replacement parts for the aforesaid goods”.
The applicant also argues that the parties’ goods are now distinguishable because of applicant’s proposed limitation. The examining attorney has considered the amendment and has considered applicant’s arguments and found them unpersuasive. Applicant’s and registrant’s goods are still related in that companies that offer waterproof fabric for use in the manufacture of clothing and sleeping bags also offer other textiles such as fabrics, cotton fabrics, silk fabrics, etc. under the same mark. Although applicant asserts that its fabrics will be used to manufacture sportswear, work clothing, outwear, and sleeping bags, this distinction is not enough to obviate the similarities between applicant’s and registrant’s goods. Specifically, applicant correctly identifies that the registration does contain fabrics for upholstery, wall coverings, and other upholstered goods. However, registrant’s identification of goods also contains the broad wording “Textiles and textile goods, namely, fabrics, cotton fabrics, felt fabrics, faux suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics” which encompass applicant’s goods. Registrant’s broad identification of different textile goods include fabrics that could be used in the manufacture of articles of clothing and sleeping bags.
The registration uses the broad wording “textiles and textile goods, namely, fabrics”, which presumably encompasses all goods of the type described, including applicant’s more narrow amended identification of “waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bags.” Registrant’s broad use of the term “fabrics” encompasses applicant’s more narrow “waterproof fabrics”. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
Determining likelihood of confusion is based on the descriptions of the goods stated in the application and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Accordingly, the goods of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis. The applicant fails to address the fact that the registration contains broad wording encompassing applicant’s goods but rather just focusses on registrant’s textiles used for upholstered goods, wall coverings, and curtains. Again, registrant’s identification of goods also contains the goods “textiles and textile goods, namely, fabrics, cotton fabrics, felt fabrics, faux suede fabrics,” etc.
Applicant also contends that likelihood of confusion between the two marks is unlikely because of the sophistication of registrant’s and applicant’s purchasers. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Applicant notes that there are registered SHIELD marks in connection with identical or closely related goods. The examining attorney has considered this argument and found it unpersuasive. As discussed in the January 12, 2018 Office Action, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Similarly to its December 18, 2017 Response to Office Action, the majority of the marks identified by the applicant combine the term SHIELD with other nondescriptive wording to create marks with different commercial impressions, such as PERTEX SHIELD, HYDRA SHIELD, BLOCKSHIELD, etc. Thus, these third party registrations do not demonstrate that the cited mark, SHIELD CLASSIC, is weak or diluted in connection with fabrics.
Finally, applicant argues that the meaning or connotation of the marks with respect to the goods can be used to infer no risk of confusion. Applicant asserts that the term SHIELD in connection with applicant’s goods will be perceived and retained by customers are “armor, cover, or protection”, which is highly suggestive of the characteristics of applicant’s goods. Applicant then asserts that its applied-for mark implies a different connotation than the cited registration. The examining attorney has considered this argument and has found it unpersuasive and asserts that because both marks contain the dominant term SHIELD that they both engender the same connotation and commercial impression.
Conclusion
Therefore, purchasers familiar with registrant’s mark “SHIELD CLASSIC” used on “Textiles and textile goods, namely, fabrics, cotton fabrics, felt fabrics, faux suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics”, upon encountering applicant’s “SHIELD” used on “waterproof fabric” would be likely to mistakenly believe that the goods emanate from a common source.
The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In view of the foregoing, the refusal under Trademark Act Section 2(d) is maintained and continues to be final with respect to U.S. Registration No. 4808805. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
/Bridget A. McCarthy/
Bridget A. McCarthy
Trademark Examining Attorney
Law Office 125
(571)272-3223
bridget.mccarthy@uspto.gov