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. 88122403
Mark: JAMES RIVER TRADERS
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Correspondence Address:
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Applicant: Branded 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) 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: August 26, 2019
The Office has reassigned this application to the undersigned trademark examining attorney.
This Office action is in response to applicant’s communication filed on July 17, 2019.
In a previous Office action dated January 17, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal. In addition, applicant was required to satisfy the following requirement: Disclaimer Requirement.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Disclaimer Requirement. See TMEP §§713.02, 714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3481134 and 5087605. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Applicant’s applied-for mark is JAMES RIVER TRADERS (in standard characters) for “Pants; Shirts”.
U.S. Registration No. 3481134 is JAMES RIVER STEAM BREWERY (in standard characters) for (in relevant part) “Clothing, namely, hats, caps, T-shirts, sweatshirts, sweatpants, shorts, sweaters, golf shirts, shirts, and jackets”.
U.S. Registration No. 5087605 is JAMES RIVER ARCHERY & Design for “Retail sporting goods stores”.
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”). 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 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.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
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).
In this case, applicant’s mark JAMES RIVER TRADERS (in standard characters) and registrants’ marks JAMES RIVER STEAM BREWERY (in standard characters) and JAMES RIVER ARCHERY & Design are similar in sound, appearance, connotation, and overall commercial impression.
Specifically, because applicant’s mark and registrants’ marks contain the identical terms JAMES RIVER, the marks are confusingly similar for the likelihood of confusion analysis. As such, because the marks contain identical terms, applicant’s mark and registrants’ marks appear confusingly similar and convey similar overall commercial impressions. Accordingly, applicant’s mark and registrants’ marks are confusingly similar for the likelihood of confusion analysis.
Indeed, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Accordingly, here, because applicant’s mark and registrants’ marks contain the identical terms JAMES RIVER, the marks are identical in part, appear confusingly similar, and convey similar overall commercial impressions. As such, applicant’s mark and registrants’ marks are confusingly similar for the likelihood of confusion analysis, and a consumer would likely mistakenly believe that applicant’s mark and registrants’ marks emanate from the same source.
In addition, because the dominant wording JAMES RIVER in applicant’s mark is identical to the the dominant wording JAMES RIVER in registrants’ marks, applicant’s mark and registrants’ marks are confusingly similar for the likelihood of confusion analysis. The wording
JAMES RIVER is the dominant wording in applicant’s mark and registrants’ marks because it is the first wording in the marks, and as such, consumers are more likely to focus on and remember this wording in the marks. In addition, for the reasons stated further previously in the Disclaimer Required section, the wording TRADERS is descriptive of applicant’s goods, rendering the wording JAMES RIVER the dominant wording of applicant’s mark. Because the dominant wording in applicant’s mark and registrants’ marks is the identical wording JAMES RIVER, applicant’s mark and registrants’ marks are confusingly similar for the likelihood of confusion analysis. Indeed, 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”). In addition, 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Accordingly, in the present case, for the reasons discussed in the Disclaimer Required section the wording TRADERS in the applied-for mark is merely descriptive of or generic for applicant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording JAMES RIVER the more dominant element of the mark. Similarly, in U.S. Registration No. 5087605, the wording ARCHERY is descriptive of registrant’s services, rendering JAMES RIVER the dominant element of the mark. Accordingly, for the foregoing reasons, the wording JAMES RIVER is the dominant element of applicant’s mark and registrants’ marks. Because this dominant element of the marks is identical, applicant’s mark and registrants’ marks are confusingly similar for the likelihood of confusion analysis, and a consumer would likely mistakenly believe that applicant’s mark and registrants’ marks emanate from the same source.
Furthermore, with respect to U.S. Registration No. 5087605, JAMES RIVER ARCHERY & Design, the stylization of characters and design element in registrant’s mark will not obviate a likelihood of confusion with applicant’s mark because applicant’s mark is in standard characters, and therefore, could be displayed in the same stylization of characters and with the same design element as registrant’s mark. As such, applicant’s mark and registrant’s mark are confusingly similar for the likelihood of confusion analysis. Indeed, 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); 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). Thus, a mark presented in stylized characters and/or with a design element, such as registrant’s mark, generally will not avoid likelihood of confusion with a mark in typed or standard characters, such as applicant’s mark, because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; 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”).
Accordingly, here, because applicant’s mark is in standard characters, it could be displayed with the same stylization of character and design element as registrant’s mark. As such, the stylization of characters and design element in registrant’s mark will not obviate a likelihood of confusion with applicant’s mark. Thus, applicant’s mark and registrant’s mark are confusingly similar for the likelihood of confusion analysis.
Therefore, for the foregoing reasons, applicant’s mark and registrants’ marks are confusingly similar for the likelihood of confusion analysis.
Relatedness of Goods and Services
Applicant’s goods and registrants’ goods and services also related.
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)).
In this case, with respect to U.S. Registration No. 3481134, JAMES RIVER STEAM BREWERY (in standard characters), the application broad wording to describe the goods, which presumably encompasses all goods of the type described, including those in registrant’s more narrow identification. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s goods and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods 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 goods and registrant’s goods are related.
Specifically, with respect to U.S. Registration No. 3481134, JAMES RIVER STEAM BREWERY (in standard characters), applicant’s broad identification of “Pants” encompasses all goods of the type described, including registrant’s “Clothing, namely,...sweatpants”. In addition, applicant’s broad identification of “Shirts” encompasses all goods of the type described including registrant’s “Clothing, namely,...T-shirts, sweatshirts, ...golf shirts, shirts”. In fact, applicant’s identification of “Shirts” is legally identical to registrant’s identification of “Clothing, namely,....shirts”. As such, applicant’s goods and registrant’s goods are in effect legally identical and otherwise closely related. Thus, applicant’s goods and registrant’s goods are related.
Notwithstanding the foregoing, the compared goods and 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); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (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 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).
In addition, the use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
Accordingly, here, with respect to U.S. Registration No. 5087605, JAMES RIVER ARCHERY & Design, because registrant’s services feature applicant’s goods, applicant’s goods and registrant’s services are related.
In addition, with respect to U.S. Registration No. 5087605, JAMES RIVER ARCHERY & Design, the attached Internet evidence, consisting of webpages showing the goods of applicant and services of registrant from Eddie Bauer, Rei Co-op, and L.L. Bean, establishes that the same entity commonly manufactures the relevant goods of applicant and provides the relevant services of registrant and markets the goods and services under the same mark. Thus, applicant’s goods and registrant’s services 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).
Therefore, for the foregoing reasons, applicant’s goods and registrants’ goods and services are related.
The examining attorney now attaches additional evidence showing the same businesses providing both a wide variety of clothing and retail sporting goods store services. See http://www.jandjoutdoorsports.com/?gclid=EAIaIQobChMI8ojOu8eg5AIVAQOGCh1bWwB4EAAYASAAEgIWgPD_BwE and http://www.jandjoutdoorsports.com/clothing?SID=9a8040ab6a1deff477ea3bc644674b81; http://www.patagonia.com/shop/clothing-gear/?utm_source=google&utm_medium=cpc&utm_campaign=Brand%20Core&gclid=EAIaIQobChMI4tmlxMeg5AIVRSSGCh0yYAA3EAAYASAAEgJ2D_D_BwE&start=0&sz=24#tile-10 and http://www.patagonia.com/shop/luggage; http://www.columbia.com/Default-Start?did=columbia%20sportswear&ef_id=EAIaIQobChMI0czsyceg5AIVTVmGCh3Djg7EEAAYASAAEgLNEvD_BwE:G:s&eid=Google+Adwords+US&gclid=EAIaIQobChMI0czsyceg5AIVTVmGCh3Djg7EEAAYASAAEgLNEvD_BwE&mid=paidsearch&nid=RSA+-+D%26E&oid=Brand+Core_General&s_kwcid=AL!3937!3!351595971805!e!!g!!columbia%20sportswear&test=paidsearch and http://www.columbia.com/mens-clothing/; http://www.underarmour.com/en-us/?cid=PS%7cUS%7cTM%7cggl%7call%7cunder+armour%7call%7call%7call%7cexact%7cdg%7cp30803049631&&cid=PS%7cUS%7cTM%7cggl%7call%7cunder+armour%7call%7call%7call%7cexact%7cdg%7cp30803049631&gclid=EAIaIQobChMIn-zy08eg5AIVUFqGCh0hoAr-EAAYASAAEgLzkfD_BwE&gclsrc=aw.ds and http://www.underarmour.com/en-us/mens; and http://www.ems.com/ and http://www.ems.com/men/. Thus, the goods are highly related.
Applicant argues that the goods and services are unrelated, however, the evidence demonstrates that this argument is unpersuasive.
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Furthermore, where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Here, the goods and services are highly related and thus the marks need not be as similar. Nonetheless, the marks are highly similar in overall commercial impression.
Therefore, for the reasons discussed above, the previously issued refusal to register under Trademark Act Section 2(d) due to a likelihood of confusion with a registered mark is continued and made FINAL.
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. 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.
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