Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

 

 

 

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

Applicant has appealed the trademark examining attorney’s Final Refusal to register the trademark FORTE for “loudspeakers”.  Registration has been refused because the applied-for mark is likely to be confused with the mark in U.S. Registration No. 3606214 for FORTÉ ELECTRONICS in stylized form for “audio systems and multi-room audio systems comprising an apparatus for recording, transmitting and reproducing sound and audio visual signals by analogue or digital means, power modules, volume controls, keypads, hubs, intercoms and power supplies.”

 

It is respectfully submitted that the Board affirm the refusal of the proposed mark on the Principal Register.

 

 

STATEMENT OF THE CASE

 

The instant application was filed on November 16, 2017.  As specified in the application, applicant seeks to register the word FORTE in standard character form for “loudspeakers.”

 

On January 8, 2018, registration was refused under Trademark Act Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 3606214 and under Trademark Act Section 2(e)(1) because the mark is merely descriptive of a feature of applicant’s goods.

 

On August 7, 2018, the application was abandoned because applicant failed to file a response to the January 8, 2018 Office action.

 

On October 6, 2018, applicant filed a petition to revive the abandoned application and provided arguments in support of registration.

 

On October 7, 2018, the application was revived.

 

On October 11, 2018, the refusal pursuant to Trademark Act Section 2(d) with regard to U. S. Registration No. 3606214 was made final and the refusal under Trademark Act Section 2(e)(1) was withdrawn.

 

On February 20, 2019, applicant filed a revocation of the power of attorney of record at that time and appointed a new attorney.

 

On May 10, 2019, applicant concurrently filed a request for reconsideration after final action and an appeal.

 

On May 30, 2019, the examining attorney denied the request for reconsideration because applicant had not resolved the outstanding issues with persuasive analysis or provided new, compelling evidence. 

 

ISSUE ON APPEAL

 

The single issue on appeal is whether the applied-for mark FORTE in standard character form for “loudspeakers” in International Class 009 is likely to be confused with the mark in U.S. Registration No. 3606214 for FORTÉ ELECTRONICS in stylized form for “audio systems and multi-room audio systems comprising an apparatus for recording, transmitting and reproducing sound and audio visual signals by analogue or digital means, power modules, volume controls, keypads, hubs, intercoms and power supplies.”

 

ARGUMENTS

 

The applied-for mark, when used on the goods listed in the application, is likely to be confused with the mark in U.S. Registration No. 3606214.

 

 

I.                 Introduction

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 3606214.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

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”).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)). 

 

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.

 

II.              Comparison of Goods

 

Applicant considers the relatedness of the goods first.  The goods at issue are applicant’s loudspeakers and the audio systems listed in the Registration.

 

Applicant begins by arguing that the goods are different and serve different purposes.  However, 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); 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).

 

The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); TMEP §1207.01.

 

In the Office action dated November 11, 2018, the trademark examining attorney 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 as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely loudspeakers and audio systems, 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); TMEP §1207.01(d)(iii).

 

Applicant offers conclusory statements regarding the nature of the Registrant’s goods and attempts to rely on extrinsic evidence of use.  However, 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)).  

 

As demonstrated in the record, the goods are closely related for a likelihood of confusion determination. 

 

III.            Sophisticated Purchasers

 

Applicant also argues that, because the purchasers of applicant’s goods are sophisticated, the purchasers exercise a high degree of care when choosing audio equipment.  However, 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). 

 

Applicant also argues that as all of the respective goods are expensive products, the purchasers are not those who purchase such goods casually.  Again, as stated above, the comparison is between the goods as identified in the application and Registration, which are identified broadly enough to encompass all price ranges for all goods of this type and do not limit or exclude any specific price range of the goods in question. 

 

The sophistication or lack thereof on the part of consumers does not diminish the likelihood of confusion.

 

IV.            Different Channels of Trade

 

Applicant argues that the goods travel in different channels of trade, while at the same time stating that “the relevant consumers are those that would be seeking out Applicant’s loudspeakers or Registrant’s audio systems for very specific purposes and would be willing to pay a significant sum to achieve that specific solution.”  Thus it would appear that applicant actually considers the channels of trade to be quite similar.

 

In any event, 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.

 

V.              Likelihood of Confusion and Actual Confusion

 

Applicant states that applicant is unaware of any actual confusion but has provided no evidence to support a conclusion of a lack of actual confusion.  Applicant’s statement of a lack of awareness is insufficient to prove that actual confusion does not exist.

 

“‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).

 

VI.            Marks are Confusingly Similar

 

Applicant contends that applicant’s mark is different in overall appearance, sound, and meaning from the cited mark because the registered mark appears in stylized form and includes the generic word ELECTRONICS.

 

Applicant’s mark is in standard character form.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). 

 

Applicant’s mark, FORTE, consists of the first word of the registered mark without an accent mark over the final letter.  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”).  Applicant’s mark contains no additional wording to distinguish it.

 

The second word, ELECTRONICS, is disclaimed in the registration.  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 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). 

 

Applicant asserts that the inclusion of the word ELECTRONICS creates a different commercial impression because it “points to qualities and operation of Registrant’s audio systems” distinguishable from the qualities and features of applicant’s goods.

 

The definition of “loudspeaker” provided in the Office action dated January 8, 2018, pages 11-14, and in the Office action dated November 11, 2018, pages 5-8, shows that a “loudspeaker” is “a device that changes electrical signals into sounds loud enough to be heard at a distance” and “an electronic device that makes sound louder.”  Therefore, applicant’s goods are also “electronics.”  Applicant’s contention that the word ELECTRONICS would not be presumed to apply to applicant’s goods and therefore prevents any likelihood of confusion is without merit.

 

The marks are highly similar in that both share the word FORTE.

 

 

CONCLUSION

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).

 

The evidence of record clearly establishes that the marks are highly similar and the goods closely related.  Registration of the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 3606214 should respectfully be affirmed.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

The proposed mark has been properly refused under Trademark Act Section 2(d).  Accordingly, the examining attorney respectfully requests that the Board affirm the refusal.

 

 

 

 

                                                                      Respectfully submitted,

 

 

/allison holtz/

Allison Holtz

Trademark Attorney

Law Office 111

             

 

Chris Doninger

Managing Attorney

Law Office 111

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Examining attorney’s appeal brief has issued

on September 29, 2019 for

U.S. Trademark Application Serial No. 87687034

 

Please follow the steps below.

 

(1)  Read the appeal brief.

 

 

(2)  Direct questions about the appeal proceeding to the Trademark Trial and Appeal Board at 571-272-8500 or TTABInfo@upsto.gov. 

 

(3)  Submit reply brief within 20 days of September 29, 2019, if you wish to do so.  A reply brief must be submitted using the Electronic System for Trademark Trials and Appeals (ESTTA) and received by the USPTO before midnight Eastern Time of the last day of the reply period.