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:  October 08, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication dated September 16, 2019 where applicant:

 

(1)   amended the identification of goods and services; and

(2)   argued against the Section 2(d) refusal.

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

(1)   Applicant’s amendment of the identification of goods and services is acceptable and made of record, and the requirement to amend the identification of goods and services is satisfied;

(2)   The refusal under Trademark Act Section 2(d) with respect to Registration No. 3952533 ONLY is withdrawn; and

(3)   Applicant’s arguments regarding the refusal under Trademark Act Section 2(d) with respect to Registration No. 4320778 are unpersuasive, and that refusal is maintained and made FINAL.

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now maintained and made FINAL with respect to U.S. Registration No. 4320778. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.64(a).

 

SUMMARY OF ISSUES

 

(1)   Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The examining attorney incorporates by reference all arguments and evidence in the previous Office action dated March 16, 2019.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4320778.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  The trademark examining attorney attached the registration to the previous Office action.

 

Applicant has applied to register the standard character mark FAR AWAY for use in connection with “Downloadable computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, mobile digital electronic devices, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; Downloadable computer game software” in International Class 9 and “Entertainment services, namely, providing on-line computer games; Providing on-line non-downloadable computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, mobile digital electronic devices, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; Providing on-line non-downloadable computer game software” in International Class 41.

 

Registrant has registered the standard character mark FARAWAY for use in connection with “Computer game software; Computer game software for use on mobile and cellular phones; Downloadable electronic game programs; Electronic game software for cellular telephones; Electronic game software for handheld electronic devices; Electronic game software for wireless devices” in International Class 9.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).

 

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.

 

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin's Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

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).

 

Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

 

Here, applicant’s standard character mark, FAR AWAY, is confusingly similar to the registered standard character mark FARAWAY. Specifically, both marks consist entirely of the wording “FAR AWAY” or “FARAWAY”. 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). Here, because both marks consist entirely of the wording “FAR AWAY” or “FARAWAY,” they are phonetic equivalents, identical in meaning and nearly identical in appearance.

 

Additionally, because the applied-for mark and the registered mark are both standard character marks, applicant could use its mark in a stylization and font similar or even identical to that of the registrant, which would increase the likelihood of confusion. 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).

 

The compared marks are identical except for a slight difference in appearance between registrant’s mark, which appears as a compound word with no space separating the words, that is, FARAWAY; and applicant’s mark, which appears as multiple words with space separating the words, that is, FAR AWAY.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

Applicant argues that “Although it is true that FAR AWAY and FARAWAY sound similar, to the observing ear there is still a pause when Applicant’s mark is spoken aloud.” The Board has expressly stated that wording identical except for the insertion of a space between two words is “phonetically equivalent.” Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

The applicant argues that the applied-for and registered mark “clearly conveys [sic] different meanings” because “The space in Applicant’s mark immediately signals to a consumer that the mark is intended to reflect distance whereas the ‘faraway’ term in the cited marks primarily means mentally absent, dreamy. Far away is an adverb phrase that appears after the item that is being modified as two words. Faraway is an adjective, it appears before the noun it modifies.” First, the trademark examining attorney notes that neither the wording “FAR AWAY” in the applied-for mark nor the wording “FARAWAY” in the registered mark modifies anything: no other wording appears in either mark. Second, the trademark examining attorney attaches dictionary evidence from Merriam-Webster.com which establishes that the meaning of “FARAWAY” is “lying at a great distance.” Applicant has stated in its Response that the wording “FAR AWAY” in the applied-for mark “is intended to reflect distance.” Moreover, the attached screenshots from Merriam-Webster.com confirm this meaning: “FAR” means “at or to a considerable distance in space,” and “AWAY” means “from this or that place”. Therefore, the applied-for mark and the registered mark convey identical commercial impressions: they both evoke lying at a great distance.

Applicant further argues “FAR AWAY is visually different than FARAWAY . . . The missing ‘space’ in the FARAWAY registrations completely changes the appearance of the marks. The Trademark Trial and Appeal Board had found that the difference of even one or two letters can be sufficient to distinguish marks from each other . . . Surely, if the difference in one letter can distinguish the marks, then so too can the omission of a space.” Applicant’s argument ignores the fact that the Board has found marks that consist of a compound word with no space separating the words “practically identical” to marks in which the same wording appears as multiple words with space separating the words.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). Moreover, as explained above, the insertion of the space between the wording “FAR” and “AWAY” does not alter the meaning or the overall commercial impression of the mark.  

 

Ultimately, when purchasers call for the goods and/or services of the applicant and the goods of the registrant using marks that are identical in sound and meaning and nearly identical in appearance, they are likely to believe that the marks identify a single source of goods and/or services. Thus, the marks are confusingly similar.

           

Relatedness of the Goods and/or Services

 

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).

 

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 and/or services 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).

 

Applicant’s goods and services are identified as “Downloadable computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, mobile digital electronic devices, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; Downloadable computer game software” in International Class 9 and “Entertainment services, namely, providing on-line computer games; Providing on-line non-downloadable computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, mobile digital electronic devices, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices; Providing on-line non-downloadable computer game software” in International Class 41.

 

Registrant’s goods are identified as “Computer game software; Computer game software for use on mobile and cellular phones; Downloadable electronic game programs; Electronic game software for cellular telephones; Electronic game software for handheld electronic devices; Electronic game software for wireless devices.” in International Class 9.

 

First, the trademark examining attorney noted in the previous Office action that the applicant’s goods and services are similar in nature to the registrant’s goods. Both the applicant and registrant use their marks in connection with computer game software that is either downloadable or recorded, and the applicant also uses its mark in connection with computer game software that is not downloadable; but all of these goods and services are computer game software or the provision of computer game software.

 

Second, the registration uses broad wording to describe the relevant goods which presumably encompasses all goods of the type described, including the applicant’s more narrowly defined goods. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Specifically, registrant’s broader wording “Computer game software” encompasses applicant’s narrower wording “Downloadable computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, mobile digital electronic devices, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless POS (point of service) devices” and “Downloadable computer game software.” See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Additionally, the goods of the parties have no restrictions as to 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 Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

 

Third, the trademark examining attorney attached to the previous Office action Internet evidence, consisting of screenshots from Nintendo.com, ValveSoftware.com, Store.SteamPowered.com, CallOfDuty.com, GamesRadar.com, and SekiroTheGame.com, which established that the same entity (here, Nintendo, Valve, and Activision) commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark. Thus, applicant’s and registrant’s goods and/or 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). The trademark examining attorney supplements the evidentiary record by attaching to the instant Office action additional Internet evidence, consisting of screenshots from NetherRealm.com, MortalKombat.com, Target.com, and Store.SteamPowered.com, which confirm that the same entity (here NetherRealm Studios and Outright Games) commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark.

 

Fourth, the trademark examining attorney attached to the previous Office action evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence showed that the goods and/or services listed therein, namely, computer game software and providing online computer games, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). The trademark examining attorney attached to the previous Office action Reg. Nos. 3949116, 4934818, 4358603, 4900139, 4665885, 4757085, 5117508, 4737520, 5135455, and 5453737. The trademark examining attorney supplements the evidentiary record by attaching additional such registrations. See Reg. Nos. 5779509, 5834876, 5837858, 5842969, and 5853075.

 

Applicant argues that “the differences in the goods and services between Applicant’s FAR AWAY and the prior cited FARWAY [sic] obviate confusion.” Applicant’s argument ignores the fact that registrant’s broad wording encompasses applicant’s goods, that the goods and services are very similar in nature, and that both Internet evidence and XSearch database evidence shows that entities commonly provide both the registrant’s goods and the applicant’s goods and/or services.

 

Applicant further argues that “the marketing channels are different” because “the registration for FARAWAY was attained using a specimen suggesting the mark is in use with older generation software. In fact, the specimen does not indicate how the mark is used in connection with software for video games. There is no login screen and no connection between the mark and the services [sic] as offered.” The fatal flaw in applicant’s argument is that 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)). The cited registration is for “Computer game software; Computer game software for use on mobile and cellular phones; Downloadable electronic game programs; Electronic game software for cellular telephones; Electronic game software for handheld electronic devices; Electronic game software for wireless devices” in International Class 9 and includes no restrictions as to the use of “older generation software.” Nothing in the description of the applicant’s goods and services in the application or in the description of the registrant’s goods in the registration indicates that their marketing channels are restricted or in any way different from each other. To the extent that applicant’s argument is construed to mean that applicant believes the registrant should not have been able to register the mark due to the alleged inadequacy of the registrant’s specimen, this constitutes a collateral attack on the registration. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration.  TMEP §1207.01(d)(iv).

 

Applicant argues that the registrant is “not offering their mark[] in connection with the services [sic] in the recitation.” To the extent that applicant’s argument is construed to mean that applicant believes the owner of the cited registration has abandoned its trademark mark due to nonuse, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

Ultimately, when purchasers encounter the applicant’s goods and/or services and the registrant’s goods, they are likely to be confused as to the source of the goods and/or services by the relationship between them. Thus, the goods and/or services are closely related.

 

Consumer Sophistication

 

Applicant argues that “Consumers of services offered by Applicant have expertise and are otherwise sophisticated with respect to the purchase of Applicant’s services.” Applicant has provided no evidence in support of this statement. Moreover, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, the standard of care for purchasing the goods and/or services is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).

 

Although applicant has not established that consumers of its goods and services are sophisticated, even if consumers of the compared goods and/or services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). Here, the marks are phonetic equivalents that convey the identical commercial impression and that are nearly identical in appearance. The registrant’s goods encompass the applicant’s goods and are very similar in nature to the applicant’s goods and services. Evidence has been entered into the record that at least twenty different entities offer both the registrant’s goods and the applicant’s goods and services. Under these circumstances, the identity of the marks and the relatedness of the goods and/or services outweighs any presumed sophisticated purchasing decision.

            Conclusion

 

Therefore, because the marks are confusingly similar, and the goods and/or services are closely related, and because consumer sophistication does not weigh in the applicant’s favor, purchasers encountering these goods and/or services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Accordingly, the refusal of registration under Trademark Act Section 2(d) is maintained and made FINAL.

           

RESPONSE GUIDELINES

 

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. 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@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 October 08, 2019 for

U.S. Trademark Application Serial No. 88228697

 

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. 

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@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 October 08, 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.”