UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/10/2019

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARKS

 

TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARKS

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2884965 (TACKLE BEACON) and 5475842 (BEACON).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

                                    

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 [or services] and differences in the marks.”); TMEP §1207.01.

 

Comparison of the Marks

 

Applicant’s mark is BEACON in standard character form.

 

Registrant No. 1’s mark in Registration No. 2884965 is TACKLE BEACON in typed form.

 

Registrant No. 2's mark in Registration No. 5475842 is TACKLE in standard character form.

 

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 TACKLE and Registrant No. 2’s mark is TACKLE.  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 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, the applicant's mark and Registrant No. 1's marks are confusingly similar because they both feature the wording BEACON.  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).

 

Furthermore, there is a likelihood of confusion because the wording BEACON is the dominant portion of Registrant No. 1's mark.  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 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).

 

Lastly, applicant simply removed the wording TACKLE from Registrant No. 1's mark.  Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Thus, the marks are confusingly similar.

 

Comparison of Goods

 

The goods are related.

 

Applicant's goods are as follows:

 

INTERNATIONAL CLASS 028: Fishing tackle; Artificial fishing baits; Fishing lures

 

Registrant No. 1’s goods in Registration No. 2884965 are as follows:

 

INTERNATIONAL CLASS 028: Fishing accessories, namely, a holder for light sticks to be attached to fishing lures, jigs and bobbers.

 

Registrant No. 2's goods in Registration No. 5475842 include the following goods:

 

INTERNATIONAL CLASS 028: coats, jackets, shirts, pants, blazers, skirts, socks, garters, caps, hats, gloves, and gilets for wear in the sport of hunting, shooting and fishing; sporting gloves, namely, gloves for use in hunting, shooting and fishing

 

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).

 

Applicant's and registrants' goods are related because all the goods are used for fishing. In addition sporting goods companies make various different goods for fishing. According to Collins dictionary, attached as http://www.collinsdictionary.com/dictionary/english/fishing-tackle, "[f]ishing tackle consists of all the equipment that is used in the sport of fishing, such as fishing rods, lines, hooks, and bait." Furthermore, Registrant No. 1's goods are fishing accessories that are used with applicant's fishing tackle, artificial fishing bait, and fishing lures.  The attached Internet evidence, consisting of fishing good manufacturers, establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark. In addition, the attached evidence shows that the goods are similar or complementary in terms of purpose or function.  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).

 

Please see evidence from:

·        BERKLEY® (http://www.berkley-fishing.com/), offering:

o   FISHING GLOVES: http://www.berkley-fishing.com/berkley-tools-and-equipment-catch-management-berkley-fishingear/berkley-coated-grip-gloves/1285868.html#start=11

o   ARTIFICIAL FISHING BAIT/FISHING LURES: http://www.berkley-fishing.com/berkley-bait-hard-bait-berkley-flicker/berkley-flicker-shad-shallow/1454428.html#sz=251&start=94

o   FISHING TACKLE: http://www.berkley-fishing.com/berkley-rods-casting-rods-berkley-heritage/berkley-heritage-trolling-rod/1365082.html#start=1

·       LINDY® (http://www.lindyfishingtackle.com/ ), offering:

o   SHIRTS: http://www.lindyfishingtackle.com/lindy-logo-tee

o   FISHING GLOVES: http://www.lindyfishingtackle.com/lindy-fish-handling-glove-1

o   ARTIFICIAL FISHING BAIT/FISHING LURES: http://www.lindyfishingtackle.com/lindy-fuzz-e-grub-jigs

o   FISHING TACKLE: http://www.lindyfishingtackle.com/lindy-walking-sinker

o   HOLDER FOR LIGHT STICKS: http://www.lindyfishingtackle.com/lindy-glow-spoon

·       NORTHLAND® (http://www.northlandtackle.com/), offering:

o   HATS: http://shop.northlandtackle.com/clothing/camouflage-hat/

o   SHIRTS: http://shop.northlandtackle.com/clothing/team-northland-long-sleeve-tee/

o   ARTIFICIAL FISHING BAIT/FISHING LURES: http://shop.northlandtackle.com/soft-plastics/impulse-live-paddle-minnow/

o   FISHING TACKLE: http://shop.northlandtackle.com/jigs/bro-bug-jig/

o   HOLDER FOR LIGHT STICKS: http://shop.northlandtackle.com/spoons-swimming/glo-shot-spoon/

·       RAPALA® (http://www.rapala.com/), offering:

o   HATS: http://www.rapala.com/rapala/clothing/rapala-fishermans-favorite-hat/RAP4034.html?cgid=rapala-clothing#start=9&cgid=rapala-clothing

o   JACKETS: http://www.rapala.com/rapala/clothing/rapala-mens-north-end-sport-jacket---carbon-black/Rapala+Mens+North+End+Sport+Jacket+Carbon+Black.html?cgid=rapala-clothing#sz=60&start=43&cgid=rapala-clothing

o   SHIRTS: http://www.rapala.com/rapala/clothing/rapala-dark-heather-grey-next-level-t-shirt/Rapala+Dark+Heather+Grey+Next+Level+T-Shirt.html?cgid=rapala-clothing#start=7&cgid=rapala-clothing

o   FISHING GLOVES: http://www.rapala.com/rapala/fishing-tools/all-other-fishing-tools/fishermans-gloves/Fishermans+Gloves.html#id=1&q=gloves&start=2

o   ARTIFICIAL FISHING BAIT/FISHING LURES: http://www.rapala.com/rapala/lures/jigging-series/jigging-rap/Jigging+Rap.html

o   FISHING TACKLE: http://www.rapala.com/vmc/hooks/circle-hooks/9788-circle-hook/9788+Circle+Hook.html#id=1&q=hook&start=1

 

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

In re Hester Indus., Inc., 231 USPQ 881, 882-83 (TTAB 1986) (holding bread and frozen chicken parts to be related because they are complementary goods that are appropriate for use together in sandwiches and may otherwise be sold to the same purchasers for use in a single meal); In re Vienna Sausage Mfg. Co., 230 USPQ 799, 799-800 (TTAB 1986) (holding sausage and cheese to be related because they are complementary goods that may be used together in recipes, sandwiches, and hors d’oeuvres); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (holding bath sponges and personal products, such as bath oil, soap, and body lotion, to be related because they are complementary goods that are likely to be purchased and used together by the same purchasers). 

 

Conclusion

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Thus, upon encountering the marks BEACON, TACKLE BEACON, and BEACON as used on the identified goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Therefore, applicant’s mark is not entitled to registration because of a likelihood of confusion with the marks in U.S. Registration Nos. 2884965 (TACKLE BEACON) and 5475842 (BEACON).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

RESPONSE GUIDELINES

 

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.  

 

 

ASSISTANCE

 

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 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. 

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@uspto.gov

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/10/2019 FOR U.S. APPLICATION SERIAL NO. 88267527

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/10/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.