To: | Road Runner Supplies, LLC (orders@trademarkraft.com) |
Subject: | U.S. Trademark Application Serial No. 88079067 - FANG - N/A |
Sent: | October 17, 2019 08:00:50 AM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88079067
Mark: FANG
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Correspondence Address: 2100 Palomar Airport Rd Ste 214-29 |
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Applicant: Road Runner Supplies, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 17, 2019
On December 4, 2018, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 87100576 and 87765589. The following prior-pending application has abandoned and no longer a potential bar to the registration of applicant’s mark: Application Serial No. 87100576. However, the following prior-pending application has since registered: Application Serial Nos. 87765589.
On September 19, 2019, applicant filed a response to the suspension letter providing arguments for removal from suspension. Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
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 No. 5672691. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied-for mark is FANG in standard characters for “Ballbearings for in-line skates; Ballbearings for roller skates; Ballbearings for skateboards; Hockey sticks; Wheels for in-line skates; Wheels for skateboards” in Class 028.
Reg. No. 5672691 is WHITEFANG in standard characters for “Baseball bats; Flippers for swimming; Hockey sticks; In-line roller skates; Knee guards for athletic use; Skateboards; Snowboards; Surf boards; Tennis rackets; Toy scooters” in Class 028.
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 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). 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)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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. 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 [ ] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The applied-for mark is FANG in standard characters.
Reg. No. 5672691 is WHITEFANG in standard characters.
As a result, the applied-for mark and registrant’s mark are confusingly similar.
Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods despite some differences.
Relatedness of the Goods
Applicant’s goods are identified as “Ballbearings for in-line skates; Ballbearings for roller skates; Ballbearings for skateboards; Hockey sticks; Wheels for in-line skates; Wheels for skateboards” in Class 028.
The goods in Reg. No. 5672691 (WHITEFANG) are identified as “Baseball bats; Flippers for swimming; Hockey sticks; In-line roller skates; Knee guards for athletic use; Skateboards; Snowboards; Surf boards; Tennis rackets; Toy scooters” in Class 028.
In the present case, applicant’s and registrant’s goods are identical with respect to hockey sticks.
Second, the attached Internet evidence from http://www.inlinewarehouse.com/Inline_Fitness_Skates/catpage-FITSK8.html and http://www.inlinewarehouse.com/Inline_Skating_Wheels/catpage-WHFITNESS.html establishes that the same entity commonly produces the inline roller skates (registrant’s goods), ballbearings and wheels (applicant’s goods) and markets the goods under the same mark. Id. (e.g., Rollarblade, Softboot, Powerslide).
In addition, the attached evidence from http://www.inlinewarehouse.com/fitlc/bearingtypes.html, http://www.inlineskates.com/Buying-Guide-for-Inline-Skate-Bearings/buying-guide-3-19-2013,default,pg.html, and http://www.devaskation.com/Guide-to-Roller-Skate-Bearings shows that inline roller skates, ballbearings and wheels are similar or complementary in terms of purpose or function. Id. (“Bearings are what allow roller skates to turn, spin, and rotate on the axle of the wheel. Roller skate bearings are essential and protect against metal grinding on metal within the wheel. Even though bearings are small, don’t be fooled! They play a huge part in how fast and how smooth you skate.”). See also http://www.inlinewarehouse.com/Inline_Skate_Bearings/catpage-SKATEBRGS.html (demonstrating that inline skate, wheels, bearings, and skate parts are also sold together).
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).
Conclusion
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 summary, applicant’s and registrant’s marks create the same commercial impression and the respective goods are highly related. Therefore, consumers are likely to be confused and mistakenly believe that the goods originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
RESPONSE TO OFFICE ACTION
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) Applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office Action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights. See TMEP §§705.02, 709.06.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
Holland, Jami
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7806
RESPONSE GUIDANCE