Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  July 17, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on June 26, 2019.

 

In a previous Office action dated February 26, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:

• Section 2(d) Refusal – Likelihood of Confusion

 

Applicant has submitted arguments against the refusal, but after careful consideration of applicant’s arguments, the examining attorney finds them unpersuasive for the reasons below.

 

Therefore, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Applicant seeks to register HIDEOUT for “Muzzle brakes that screw onto a rifle barrel” in Class 13.

 

The refusal of registration of the applied-for mark is made FINAL because of a likelihood of confusion with the mark HIDE OUT in U.S. Registration No. 4610437.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously 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 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

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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). 

 

In the present case, applicant’s mark is HIDEOUT and registrant’s mark is HIDE OUT.  With the exception of a space that has no effect on sound or meaning, these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are virtually identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

In addition, in its June 26, 2019 arguments, applicant does not specifically raise any arguments regarding differences in the marks themselves or their commercial impressions, focusing instead on other Dupont factors, namely, on the dissimilarity of the goods and the trade channels.

 

Therefore, the marks are confusingly similar.

 

RELATEDNESS OF THE GOODS

 

The applicant identifies the following goods in International Class 13:

 

Muzzle brakes that screw onto a rifle barrel

 

Registration No. 4610437 identifies the following goods in International Class 8:

 

Sporting knives; hunting knives

 

The compared goods 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] 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).

 

Furthermore, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).  Here, as discussed above, the marks are virtually identical.

 

The previously attached Internet evidence consists of screenshots from third parties that produce rifle accessories including muzzle brakes in addition to sporting and hunting knives:

 

Ruger

·         http://shopruger.com/Muzzle-Brake-308-Caliber-5_8-24/productinfo/90602/

·         http://shopruger.com/Ruger-Trajectory/productinfo/18659/

Browning

·         http://www.browning.com/products/firearms/pistols/1911-22/limited-availability/1911-22-black-label-suppressor-ready-muzzle-brake.html

·         http://www.browning.com/products/firearms/rifles/buckmark-rifles/Limited-Availability/buck-mark-target-bronze-muzzle-brake-rifle.html

·         http://www.browning.com/products/knives/day-carry/wheelhouse.html

Beretta

·         http://www.beretta.com/en-us/692-xtrap/

·         http://www.berettausa.com/en-us/beretta-hunter-knife-b2c-only-giraffe-bone-handle/ber0102/

Wilson Combat

·         http://shopwilsoncombat.com/Rapid-Thread-Muzzle-Brake-Blast-Diverter/productinfo/SP-RTMBBD/

·         http://shopwilsoncombat.com/Star-Light-Tactical-Fighter-55-Wilson-Tactical-_-Hogue-Knives/productinfo/WTK-SLF-5/

 

The additional attached Internet evidence consists of screenshots from additional third parties that produce rifle accessories including muzzle brakes in addition to sporting and hunting knives:

 

Rat Worx

·         Knives: http://store.ratworxusa.com/catalog/knives/automatic?brand_id=1423&page=1

·         Muzzle Brake: http://store.ratworxusa.com/products/accessories-990000004733-cw-bcb-b5824-2545

 

Brownells

·         Knife: http://www.brownells.com/emergency-survival-gear/knives/knives/brownells-branded-squid-blackwash-knife-prod110821.aspx?avs%7cManufacturer_1=brownells

·         Muzzle Brake: http://www.brownells.com/rifle-parts/muzzle-devices/compensators-amp-muzzle-brakes/ar-15-short-muzzle-brake-22-caliber-prod56085.aspx?avs%7cManufacturer_1=brownells

 

Daniel Defense

·         Knife: http://danieldefense.com/daniel-defense-folding-knife.html

·         Muzzle Brake: http://danieldefense.com/dd-wavetm-muzzle-brake-1-2-x-28-tpi.html

 

Sig Sauer

·         Knives: http://www.sigsauer.com/store/gear/knives.html

·         Muzzle Brakes: http://www.sigsauer.com/store/catalogsearch/result?q=muzzle+brake

 

Additional examples of third parties that Makes Muzzle Brakes and sells knives made by other companies:

Crosstac

·         Knife: http://www.crosstac.com/belts/sog-centi-ii/

·         Muzzle Brake: http://www.crosstac.com/shop-all-products/mk-109-muzzle-brake/

 

Ghost Inc.

·         Knives: http://ghostinc.com/the-knife/zero-tolerance/

·         Muzzle Brake: http://ghostinc.com/valkyrie-muzzle-brake/

 

The evidence establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function.

 

In its June 26, 2019 response, applicant argues that the marks that the goods are both dissimilar and unrelated despite being sold in the same trade channel.  Therefore it does not appear that applicant disputes that the goods are sold in the same trade channel, but rather is arguing that the goods are “unrelated” despite being sold in the trade channel.

 

Applicant argues (and provides links to website evidence) that the first cited third party, namely, RUGER, sells other goods as well and argues that evidence of same source is not sufficient to demonstrate relatedness alone.  Applicant also argues that sporting goods store such as Cabelas would sell knives, guns and underwear, arguing that same trade channel evidence is not enough to support relatedness.

 

As an initial matter, there is ample evidence, both previously attached and attached above, that these goods are not only sold in the same trade channel, but of the same producer affixing its brand to both muzzle brakes and sporting knives.  Therefore the office has not just demonstrated that they goods are sold in the same trade channels, but also that they are produced, marketed, and manufactured by the same underlying source.  The office has not just coincidentally showed one manufacturer that happens to produces knives and muzzle brakes, but has met its burden and shown multiple producers that consistently produce both goods.

 

Applicant is effectively asking examiner to ignore the wealth of evidence and cut off what it means to be related at some arbitrary point, a cutoff point that is not backed by any specific evidence or relevant law.  As stated above, the compared goods 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] 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).

 

By logical extension of applicant’s argument, a consumer is not likely to think a RUGER knife is from the same company as a RUGER gun. Based on the evidence, this simply appears to be an untenable argument.

 

These marks are also distinctive, nearly identical, and both used by numerous third parties on goods that are not only in the same trade channels, but consistently produced by the exact same source companies.  Therefore the argument that these goods are not related and, by extension, that these marks are not likely to cause confusion, is equally unpersuasive.

 

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).

 

Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion to relevant consumers, and therefore the refusal of registration is made FINAL.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/benjaminrosen/

Benjamin Rosen

Examining Attorney

Law Office 120

(571) 272-8425

benjamin.rosen@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 July 17, 2019 for

U.S. Trademark Application Serial No. 88204177

 

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. 

 

 

/benjaminrosen/

Benjamin Rosen

Examining Attorney

Law Office 120

(571) 272-8425

benjamin.rosen@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 July 17, 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.”