| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87865930 |
| LAW OFFICE ASSIGNED | LAW OFFICE 124 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87865930/mark.png |
| LITERAL ELEMENT | STOIC |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Applicant seeks registration of its STOIC mark, U.S. Application Serial No. 87865930 (the "Mark"). The examining attorney has rejected the application for the following reasons: (1) the Mark is likely to cause consumer confusion as to source with two previously registered marks, U.S. Registration Nos. 4303136 and 4313281; and (2) that the classification and/or identification of the goods is unacceptable. Applicant submits the following arguments and amendments and respectfully requests that the examining attorney permit registration of the Mark.
Likelihood of Confusion The examining attorney first refuses to register the Mark because of a likelihood of confusion under 15 U.S.C. § 1052(d), identifying two registered marks—U.S. Registration Nos. 4303136 and 4313281—as confusingly similar. The examining attorney submits that “[r]egistrant’s marks are for STOIC in standard character form (Reg. No. 4303136) and STOIC in slightly stylized form with a design element (Reg. No. 4313281).”
The Lanham Act provides for rejecting registration of a mark that "so resembles a [registered] mark . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d). The section continues that if "confusion, mistake, or deception is not likely to result from continued use…of similar marks…concurrent registrations may be issued." Id. As the examining attorney points out, the likelihood of confusion determination is assisted by applying the DuPont factors outlined by the Court of Customs and Patent Appeals, predecessor to the Federal Circuit. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
The thirteen DuPont factors are as follows: (1) the marks' similarity in appearance, sound, connotation, and commercial impression; (2) the similarity of the goods and services covered by the marks; (3) the similarity of the channels of trade; (4) the sophistication of the typical consumer; (5) the distinctiveness (sales, advertising, length of use) of the registered mark; (6) the number of other, similar marks used for similar goods or services; (7) any evidence of actual confusion; (8) the length of concurrent use without evidence of actual confusion; (9) the variety of goods or services covered by the marks; (10) any discussions or agreements between the marks' owners; (11) the marks' current exclusivity in the marketplace; (12) the substantiality of potential confusion; and (13) any other evidence probative of concurrent use's effects on consumers. Id. at 1361. Because the likelihood of confusion determination is case specific, some factors may be more or less relevant in a given case. Id. at 1361-62; see also Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355-57 (Fed. Cir. 2011).
The examining attorney asserts that the following factors are most relevant in this case: (1) similarity of the marks; (2) similarity and nature of the goods; and (3) similarity of the trade channels. The examining attorney also places significant emphasis on the second DuPont factor—the similarity of the goods and services covered by the marks and the similarity of the channels of trade. In re E.I. DuPont, 476 F.2d at 1361.
As amended, applicant’s Mark seeks registration under international class 028 for “Weight lifting equipment, namely knee sleeves to provide support during exercise.” Notably, Applicant’s Mark specifically limits the goods covered to “weight lifting equipment,” and, in particular, those used to provide support during exercise. In considering the similarity of the goods offered, the inquiry must focus on the relation of the goods in the minds of consumers. For any two marks, the inquiry must focus on the relation of the goods and services in the minds of consumers. Packard Press, Inc. v. Hewlett- Packard, Inc., 227 F.3d 1352, 1358 (Fed. Cir. 2000).
Confusion is not necessarily likely simply because the goods or services can be described as being in the same category or field. See Therma-scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002). Indeed, "[g]oods [and services] may fall under the same general product category but operate in distinct niches," thereby avoiding confusion. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 288 (3d Cir. 2001). Applicant's Mark falls in just such a niche category—that of weight lifting equipment. Providers of goods and services related to weight lifting equipment tend to remain limited to such weight lifting products and services. Moreover, weight lifting equipment tends to be specialized equipment and generally not available in the same channels are trade as more generalized sporting equipment, let alone found together with outdoor appeal. In addition, and unlike weight lifting equipment, the goods listed by Registrant (e.g. tech shells, jackets, pants, base layers, gloves, and hats) are clearly intended for use in an outdoor setting. As such, consumers looking to purchase weight lifting equipment would thus look to the niche weight lifting equipment market and not to providers of outdoor apparel, especially when those consumers are looking for a particular good (here a knee sleeve) which is designed to provide support during exercise. Accordingly, Applicant submits that consumers are unlikely to believe that weight lifting equipment and outdoor apparel are related, even under similar marks and even where the channels of trade are similar. Applicant therefore requests reconsideration. |
|
| GOODS AND/OR SERVICES SECTION (025)(class deleted) | |
| GOODS AND/OR SERVICES SECTION (028)(current) | |
| INTERNATIONAL CLASS | 028 |
| DESCRIPTION | Knee sleeves |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (028)(proposed) | |
| INTERNATIONAL CLASS | 028 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Weight lifting equipment, namely knee sleeves to provide support during exercise. | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Thomas M. Finetti/ |
| SIGNATORY'S NAME | Thomas M. Finetti |
| SIGNATORY'S POSITION | Attorney of record, New Jersey bar member |
| SIGNATORY'S PHONE NUMBER | 908-758-1374 |
| DATE SIGNED | 01/24/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 24 23:17:54 EST 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.X-201 90124231754210157-8786593 0-62058e36e7d29b21d29b468 325aaff61dfc4e24dfce18f11 12756e97f36c7d219e-N/A-N/ A-20190124230744662729 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Applicant seeks registration of its STOIC mark, U.S. Application Serial No. 87865930 (the "Mark"). The examining attorney has rejected the application for the following reasons: (1) the Mark is likely to cause consumer confusion as to source with two previously registered marks, U.S. Registration Nos. 4303136 and 4313281; and (2) that the classification and/or identification of the goods is unacceptable. Applicant submits the following arguments and amendments and respectfully requests that the examining attorney permit registration of the Mark.
Likelihood of Confusion
The examining attorney first refuses to register the Mark because of a likelihood of confusion under 15 U.S.C. § 1052(d), identifying two registered marks—U.S. Registration Nos. 4303136 and 4313281—as confusingly similar. The examining attorney submits that “[r]egistrant’s marks are for STOIC in standard character form (Reg. No. 4303136) and STOIC in slightly stylized form with a design element (Reg. No. 4313281).”
The Lanham Act provides for rejecting registration of a mark that "so resembles a [registered] mark . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d). The section continues that if "confusion, mistake, or deception is not likely to result from continued use…of similar marks…concurrent registrations may be issued." Id. As the examining attorney points out, the likelihood of confusion determination is assisted by applying the DuPont factors outlined by the Court of Customs and Patent Appeals, predecessor to the Federal Circuit. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
The thirteen DuPont factors are as follows: (1) the marks' similarity in appearance, sound, connotation, and commercial impression; (2) the similarity of the goods and services covered by the marks; (3) the similarity of the channels of trade; (4) the sophistication of the typical consumer; (5) the distinctiveness (sales, advertising, length of use) of the registered mark; (6) the number of other, similar marks used for similar goods or services; (7) any evidence of actual confusion; (8) the length of concurrent use without evidence of actual confusion; (9) the variety of goods or services covered by the marks; (10) any discussions or agreements between the marks' owners; (11) the marks' current exclusivity in the marketplace; (12) the substantiality of potential confusion; and (13) any other evidence probative of concurrent use's effects on consumers. Id. at 1361. Because the likelihood of confusion determination is case specific, some factors may be more or less relevant in a given case. Id. at 1361-62; see also Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355-57 (Fed. Cir. 2011).
The examining attorney asserts that the following factors are most relevant in this case: (1) similarity of the marks; (2) similarity and nature of the goods; and (3) similarity of the trade channels. The examining attorney also places significant emphasis on the second DuPont factor—the similarity of the goods and services covered by the marks and the similarity of the channels of trade. In re E.I. DuPont, 476 F.2d at 1361.
As amended, applicant’s Mark seeks registration under international class 028 for “Weight lifting equipment, namely knee sleeves to provide support during exercise.” Notably, Applicant’s Mark specifically limits the goods covered to “weight lifting equipment,” and, in particular, those used to provide support during exercise. In considering the similarity of the goods offered, the inquiry must focus on the relation of the goods in the minds of consumers. For any two marks, the inquiry must focus on the relation of the goods and services in the minds of consumers. Packard Press, Inc. v. Hewlett- Packard, Inc., 227 F.3d 1352, 1358 (Fed. Cir. 2000).
Confusion is not necessarily likely simply because the goods or services can be described as being in the same category or field. See Therma-scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002). Indeed, "[g]oods [and services] may fall under the same general product category but operate in distinct niches," thereby avoiding confusion. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 288 (3d Cir. 2001). Applicant's Mark falls in just such a niche category—that of weight lifting equipment. Providers of goods and services related to weight lifting equipment tend to remain limited to such weight lifting products and services. Moreover, weight lifting equipment tends to be specialized equipment and generally not available in the same channels are trade as more generalized sporting equipment, let alone found together with outdoor appeal. In addition, and unlike weight lifting equipment, the goods listed by Registrant (e.g. tech shells, jackets, pants, base layers, gloves, and hats) are clearly intended for use in an outdoor setting. As such, consumers looking to purchase weight lifting equipment would thus look to the niche weight lifting equipment market and not to providers of outdoor apparel, especially when those consumers are looking for a particular good (here a knee sleeve) which is designed to provide support during exercise. Accordingly, Applicant submits that consumers are unlikely to believe that weight lifting equipment and outdoor apparel are related, even under similar marks and even where the channels of trade are similar. Applicant therefore requests reconsideration.