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. 88219545
MARK: GARMAN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Garman Accessories To The Maxx
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 2/14/2019
Summary of Issues that Applicant Must Address
Refusal Under Section 2(d): Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2288989, 3468532, 3468551, 3468553, and 4048064. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant has applied for the mark GARMAN in standard characters for use in connection with “retail store services featuring accessories for trucks and SUVs” in International Class 35.
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.
Relevant to this case are the following registrations:
(1) U.S. Registration No. 2288989 is GARMIN, for electronic navigational devices, namely, global positioning satellite (gps) based navigation receivers; electronic depth sounders; portable communication devices, namely, radio transceivers and wireless telephones; pre-recorded cd-roms and cartridges featuring digital map data and software for facilitating use of gps based navigation receivers, radio transceivers and wireless telephones in International Class 9.
(2) U.S. Registration No. 3468532 is GARMIN for, in relevant part, automobile navigation apparatus featuring GPS receivers, digital map displays and turn-by-turn instructions; global positioning systems comprised of computers, transmitters, network interface devices, GPS receivers, antennas, and a LCD display; automobile navigation apparatus featuring GPS receivers, digital map displays and turn-by-turn instructions in International Class 9
(3) U.S. Registration No. 3468551 is GARMIN and design for, in relevant part, automobile navigation apparatus featuring GPS receivers, digital map displays and turn-by-turn instructions; global positioning systems comprised of computers, transmitters, network interface devices, GPS receivers, antennas, and a LCD display; automobile navigation apparatus featuring GPS receivers, digital map displays and turn-by-turn instructions in International Class 9.
(4) U.S. Registration No. 3468553 is GARMIN and design for, in relevant part, automobile navigation apparatus featuring GPS receivers, digital map displays and turn-by-turn instructions; global positioning systems comprised of computers, transmitters, network interface devices, GPS receivers, antennas, and a LCD display; automobile navigation apparatus featuring GPS receivers, digital map displays and turn-by-turn instructions in International Class 9.
(5) U.S. Registration No. 4048064 is GARMIN AUTHORIZED DEALER for dealership services in the fields of navigation, marine, fitness and avionics equipment in International Class 35.
Comparison of the Marks
In the present case, Applicant’s applied-for mark, GARMAN, is nearly identical in appearance, sound, and commercial impression to the above-cited registered marks. U.S. Registration Nos. 2288989 and 3468532 are for the mark GARMIN in standard character form. These marks share nearly identical spelling, sharing all but a single letter in common, and are essentially phonetic equivalents. Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); TMEP §1207.01(b)(ii).
U.S. Registration Nos. 3468551, 3468553, and 4048064 are also for the mark GARMIN, but contain also additional matter. These marks are slightly stylized and contain only very minor design elements, including the addition of a small triangle over the letter “n” in GARMIN and, in the case of Registration No. 4048064, a stylized bar underneath the word “GARMIN.” Where a mark comprises both wording and a design, greater weight is often given to the wording. This is because it is the wording that purchasers would use to refer to or request the goods or services. See, e.g., Viterra, 671 F.3d at 1366, 101 USPQ2d at 1911; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); TMEP §1207.01(c)(ii). The stylization and the minor design elements contained in the registered marks is not sufficient to distinguish Applicant’s mark from them.
With respect to U.S. Registration No. 4048064, GARMIN AUTHORIZED DEALER, likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by the presence of a term that is descriptive or suggestive of the named goods or services; if the dominant portion of both marks is similar, then the marks may be confusingly similar notwithstanding peripheral differences. See, e.g., In re Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018); TMEP §1207.01(b)(iii). Thus, the addition of additional matter in the registered mark does not obviate the likelihood of confusion between Applicant’s applied-for mark and U.S. Registration No. 4048064.
As such, based on the similar overall sound, appearance, and impression of the marks, the marks are likely to cause confusion when used on or in connection with similar goods and services.
Relatedness of the Goods and/or Services
The goods and 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 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).
More specifically, 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).
The attached internet evidence from Garmin.com, PepBoys.com, AutoZone.com, and TheGPSStore.com establishes that GPS systems, including those of registrant, are often designed for installation in trucks and SUVs and therefore are specifically designed for use, in part, as truck and SUV accessories. The attached evidence from TheGPSStore.com further establishes that dealerships in the field of navigation sell GPS navigation devices for use in trucks and SUVs. Thus, the relevant goods are sold or provided through the same trade channels as the registrant’s services, and the respective goods and services would be used by the same classes of consumers in the automotive field, namely, vehicle owners. Applicant’s and registrant’s goods and/or services are therefore 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).
The evidence demonstrates that the services Applicant provides under the applied-for mark, namely, “retail store services featuring accessories for trucks and SUVs,” and registrant’s goods and services are closely related, commonly provided by the same entities, and marketed to the same end consumers though the same or similar trade channels.
Conclusion
The parties utilize nearly identical marks which convey a highly similar overall commercial impression in connection with closely related goods and/or services marked to the same consumers though similar channels of trade. Therefore, registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2288989, 3468532, 3468551, 3468553, and 4048064.
Applicant should note the following additional ground for refusal.
REFUSAL Under SECTION 2(e)(4): PRIMARILY MERELY A SURNAME
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances—singly or in combination—and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Rarity of Surname
Applicant has applied for the mark GARMAN in standard characters for use in connection with “retail store services featuring accessories for trucks and SUVs” in International Class 35.
The attached evidence from LEXISNEXIS® demonstrates the surname significance of GARMAN. This evidence shows Applicant’s applied-for mark appearing 9,097 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers. The evidence establishes Garman as a common surname within the United States.
Connection to Applicant
A term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance. TMEP §1211.02(b)(iv); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”); Miller v. Miller, 105 USPQ2d 1615, 1620, 1622-23 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname where “Miller” was the surname of the applicant and the term “law group” was found generic).
Here, the application was signed by Glenn Garman, who is listed on the application as manager of the entity claiming ownership of the mark. As such, there is a connection between the surname appearing in the mark and the applicant.
Other Recognized Meaning
Structure and Pronunciation
The suffix “–man” is commonly used as a suffix for surnames that are recognized by consumers. In the present case, as the evidence from the United States Census Bureau, Applicant’s proposed mark shares the same “–man” suffix as some of the most common surnames in the United States including the surnames Coleman and Freeman, both of which are among the top 150 most common surnames in the United States.
Stylization of the Mark
Applicant’s applied-for mark is in standard character form, therefore no stylization is presumed. As such, this factor does not lessen the surname significance of the term “Garman.”
Conclusion
Applicant’s applied-for mark, GARMAN, is a common surname with no other recognized meaning other than a surname. The mark is the surname of an individual connected with Applicant, has the structure and pronunciation of a surname, and does not have stylization or a design component. Accordingly, registration is refused under Trademark Act Section 2(e)(4) based on the proposed mark being primarily merely a surname.
Options for Response to Surname Refusal
The following pertains to the refusal under Section 2(e)(4) only and will not overcome the Section 2(d) likelihood of confusion refusal discussed above.
A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) based on a claim of acquired distinctiveness. See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1211, 1212. Applicant may respond by evidence of acquired distinctiveness, with the following statement, if accurate: “The evidence shows that the mark has become distinctive of the goods and/or services.” 37 C.F.R. §2.41(a)(3); TMEP §1212.06. Such additional evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
Alternatively, Applicant may respond by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §§1052(f), 1091. To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register. TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Assistance
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.
/Troy Knight/
Examining Attorney
Law Office 107
U.S. Patent and Trademark Office
(571) 270-3151
Troy.Knight@USPTO.GOV/Troy Knight/
Troy F. Knight
Examining Attorney
Law Office 107
U.S. Patent and Trademark Office
(571) 270-3151
Troy.Kni
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
