United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 87739179
Mark: VALOR
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Correspondence Address: Lazer, Aptheker, Rosella & Yedid, P.C.
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Applicant: VALOR INDUSTRIES LLC
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Reference/Docket No. 8557.0004
Correspondence Email Address: |
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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: March 30, 2020
On September 20, 2018, action on this application was suspended pending the disposition of U.S. Application Serial No. 87496508. The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.
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. 4195757. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
Section 2(d) Final Refusal
THIS FINAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4195757. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 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.
The applicant’s mark is VALOR for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; clothing for athletic use, namely, padded pants; football uniforms; hockey shoes; jerseys; padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey and baselayer tops; short-sleeved or long-sleeved t-shirts; sports caps and hats; sports pants; sweatpants; t-shirts; graphic t-shirts; sports jerseys.”
The registrant’s mark is VALOR for “clothing, namely, T-shirts, shirts, tank tops, sweatshirts, hooded sweatshirts, pants, shorts, boardshorts.”
Comparison of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, 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)-(b)(v).
Applicant’s mark is VALOR (stylized) and registrant’s mark is VALOR (standard character).
Therefore, the marks were found to be confusingly similar.
In the response of September 11, 2018, the applicant argued that the mark is weak in connection with the goods. The applicant also presents third party evidence showing the use of “valor” with other wording for clothing items.
The applicant’s section 2(d) arguments regarding the marks have been considered but are not persuasive.
The applicant’s third party use merely showing a Google search list and an eBay search list has limited probative value. A search results summary from an Internet search engine has limited probative value because such a list does not show the context in which the term or phrase is used on the listed web pages and may not include sufficient surrounding text to show the context within which the term or phrase is used. TBMP §1208.03; see In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Star Belly Stitcher, Inc.,107 USPQ2d 2059, 2062 n.3 (TTAB 2013); TMEP §710.01(b).
Further, the applicant further argues that the mark VALOR suggests a “comprehensive strength and steadfastness” that is popularly used in connection among clothing brands. “Consumers are attracted to clothing and apparel that is associated with notions of durability and strength, just as consumers are attracted to clothing that is ‘essential’ or ‘fundamental.’”
The examining attorney believes that the term has an arbitrary meaning as it relates to clothing items. Moreover, these are the only marks with the sole term VALOR used in connection with clothing. That is, the marks do not include any other wording that would diminish or alter the meaning of VALOR. Therefore, the commercial impression is that which applicant’s describes as strength and steadfastness when used in connection with clothing, and thus a strong mark.
Finally, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the applicant’s stylization does not obviate the similarity of the marks in this case. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). The registrant’s mark appears in standard character, which means the registrant could present their mark in any stylization and may incorporate stylization similar to the applicant. The minimal stylization in applicant’s mark “VALOR” does not change the meaning of the terms appearing in the mark.
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods 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.2d 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).
Because the marks share the identical term “VALOR,” purchasers are likely to believe that applicant’s and registrant’s goods may emanate from the same party.
Comparison of the Goods
The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
The applicant’s goods are “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; clothing for athletic use, namely, padded pants; football uniforms; hockey shoes; jerseys; padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey and baselayer tops; short-sleeved or long-sleeved t-shirts; sports caps and hats; sports pants; sweatpants; t-shirts; graphic t-shirts; sports jerseys.”
The registrant’s goods are “clothing, namely, t-shirts, shirts, tank tops, sweatshirts, hooded sweatshirts, pants, shorts, boardshorts.”
As previously discussed, when analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic 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)).
In this case, the goods in the application and registration are identical, namely, “shirts, t-shirts, pants.”
Moreover, the application and registration uses broad wording to describe “shirts and pants” which presumably encompasses all goods of the type described, including applicant’s and registrant’s more narrow goods of “clothing for athletic use, namely, padded pants; jerseys; short-sleeved or long-sleeved t-shirts; sports pants; sweatpants; graphic t-shirts; sports jerseys” and “tank tops, sweatshirts, hooded sweatshirts, shorts, boardshorts.” 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).
With respect to the other clothing goods, the previously attached internet evidence from Ralph Lauren and Tommy Hilfiger and attached internet evidence from Russell Athletic and Nike establishes that companies like the applicant that produce “jackets, footwear, hats and caps, athletic uniforms; football uniforms; hockey shoes; padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey and baselayer tops” also produce “t-shirts, shirts, tank tops, sweatshirts, hooded sweatshirts, pants, shorts, boardshorts,” like the registrant. This evidence shows that applicant’s and registrant’s goods overlap and are commonly available from a single source. Moreover, this evidence indicates that the relevant consumers are likely accustomed to encountering “jackets, footwear, hats and caps, athletic uniforms; football uniforms; hockey shoes; padded elbow compression sleeves sold as an integral component of athletic clothing, namely, jersey and baselayer tops and t-shirts, shirts, tank tops, sweatshirts, hooded sweatshirts, pants, shorts, boardshorts” emanating from the same source and offered under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Also, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of 15 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 various clothing goods listed therein, are of a kind that may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).
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)).
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); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Since the marks are identical and the goods identical and otherwise closely related, the examining attorney concludes that prospective purchasers would likely be confused as to the source of the goods. Accordingly, the examining attorney maintains and makes FINAL the refusal to register applicant’s mark on the Principal Register.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Failure to Respond—Abandonment of Goods
In such case, the application will proceed for the all the goods in Classes 10 and 28.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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).
/William T. Verhosek/
William T. Verhosek
Trademark Examining Attorney
USPTO/Law Office 114
571-272-9464
william.verhosek@uspto.gov
RESPONSE GUIDANCE
