Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 12, 2019

 

This Office action is in response to applicant’s communication filed on August 28, 2019.

 

This Office action is supplemental to and supersedes the previous Office action issued on February 28, 2019, in connection with this application.  The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, a registered mark that may result in a likelihood of confusion with the applied-for mark was not cited.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated February 28, 2019.  The issue(s) raised in the previous February 28, 2019 Office action is/are as follow and is/are maintained:  the Section 2(d) likelihood of confusion refusal. The examining attorney notes that the applicant submitted arguments and evidence against the refusal. Applicant’s arguments and evidence were considered but did not overcome the refusal.

 

Further, the following is a SUMMARY OF NEW ISSUES that applicant must address:

 

            •  Section 2(d) Refusal – Likelihood of Confusion

 

Applicant must respond to all issues raised in this Office action and the previous February 28, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The previously issued Trademark Act Section 2(d) refusal related to U.S. Registration No. 4667424 is continued and maintained.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4687693.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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.

 

Summary of the Marks

 

The applied-for mark is ARGONAUT in standard characters for:

 

International Class 18: Backpacks.

 

International Class 22: Climbing ropes; Cloth bags for storage; Ropes and synthetic ropes; Ropes for marine use; Ropes, not of metal; Tents.

 

International Class 25: Fleece bottoms; Fleece jackets; Fleece pullovers; Fleece shorts; Fleece tops; Fleece vests; Gloves; Jackets; Pants; Shirts; Socks; Underwear; Clothing, namely, base layers.

 

U.S. Registration No. 4667424 is WEST FLORIDA ARGONAUTS in stylized characters with a design element for the relevant goods of “Jerseys; Short sets; Tops; Wearable garments and clothing, namely, shirts” in International Class 25.

 

Of note, U.S. Registration No. 4667424 is owned by the same entity that owns U.S. Registration No. 4667424.

 

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).

 

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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); 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). In this case, the wording in the registered mark is “WEST FLORIDA ARGONAUTS” with the wording “WEST FLORIDA” disclaimed. Thus, the wording “ARGONAUTS” is the dominant portion of registrant’s mark.

 

This dominant portion of the registered mark is merely the plural form of the wording in the applied-for mark. Wording that is the singular or plural form of the dominant portion of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression; thus, in this case the pluralization does not weigh against a finding that the marks are confusingly similar.  See Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

Finally, the stylization in the registered mark also does not distinguish the marks or prevent a finding of a likelihood of confusion because the applied-for mark is in standard characters. 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 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., 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”). In other words, the applied-for mark could be displayed in the same manner as the registered mark and with the same stylization, making the marks confusingly similar in appearance.

 

Thus, for the reasons above, the applied-for and registered marks are confusingly similar.

 

Similarity of the Goods

 

The registrant’s identification of goods and services is identical to the identification of goods and services found in U.S. Registration No. 4667424. As a result, the applicant’s goods are related to the registrant’s goods for the same reasons stated in the previous Office action, restated herein.

 

The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi).

 

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); 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/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 previously attached Internet evidence, consisting of screenshots from the webpages below, establishes that entities that produce and/or sell shirts and other tops, like the registrant, commonly also produce and/or sell registrant’s various goods, such as backpacks, climbing gear, and clothing. In other words, consumers are accustomed to seeing the registrant’s goods and the applicant’s goods sold under the same mark. As a result, the use of confusingly similar marks on both applicant’s and registrant’s goods is likely to result in consumer confusion. 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).

 

Arc’teryx: http://arcteryx.com/us/en/c/mens/packs/; http://arcteryx.com/us/en/c/mens/mid-layer-and-fleece/; http://arcteryx.com/us/en/c/mens/shirts-and-tops/; http://arcteryx.com/us/en/shop/haku-rope-bag; http://arcteryx.com/us/en/shop/mens/covert-vest; http://arcteryx.com/us/en/shop/mens/phase-sl-boxer-short; http://arcteryx.com/us/en/c/mens/accessories/sub-cat=gloves; http://arcteryx.com/us/en/c/mens/pants/

 

Black Diamond: http://www.blackdiamondequipment.com/en_US/climbing-ropes; http://www.blackdiamondequipment.com/en_US/tents-and-bivys; http://www.blackdiamondequipment.com/en_US/mens-all-apparel; http://www.blackdiamondequipment.com/en_US/approach-quarter-zip-fleece-APWQ4N_cfg.html#start=1; http://www.blackdiamondequipment.com/en_US/search?q=gloves

 

Mammut: http://us.mammut.com/cat/3020/ropes/?filter.availability=Available&page=1; http://us.mammut.com/cat/101050/base-layer/?filter.availability=Available&page=1; http://us.mammut.com/cat/101064/gloves/?filter.availability=Available&page=1; http://us.mammut.com/cat/3010/backpacks-bags/?filter.availability=Available&page=1; http://us.mammut.com/p/2290-00990-0001/magic-rope-bag/; http://us.mammut.com/cat/101030/t-shirts-shirts/?filter.availability=Available&page=1; http://us.mammut.com/search/?q=fleece

 

Marmot: http://www.marmot.com/search?globalsearch=fleece&lang=en_US&q=fleece; http://www.marmot.com/equipment/backpacks-and-luggage/backpacking-and-day-packs/; http://www.marmot.com/search?globalsearch=tent&lang=en_US&q=tent; http://www.marmot.com/underwear/mens-underwear/

 

Under Armour: http://www.underarmour.com/en-us/mens/fleece-shorts/g/393fn; http://www.underarmour.com/en-us/mens/bottoms/g/39o?lsg=a5298eb6-9182-4021-a69b-53e2a88d1d01; http://www.underarmour.com/en-us/search?q=fleece

 

Conclusion

 

For the reasons above, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4687693.

 

HOW TO RESPOND

 

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  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Robert Ratcliffe/

Examining Attorney        

Law Office 109

Phone: (571) 272-5257

Fax: (571) 273-5562

robert.ratcliffe@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 12, 2019 for

U.S. Trademark Application Serial No. 88201000

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Robert Ratcliffe/

Examining Attorney        

Law Office 109

Phone: (571) 272-5257

Fax: (571) 273-5562

robert.ratcliffe@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 12, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”