United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88268442
Mark: HDC
|
|
|
Correspondence Address:
|
|
|
Applicant: Heritage Distilling Company, Inc.
|
|
|
Reference/Docket No. 0112496-0000
Correspondence Email Address: |
|
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: September 24, 2019
This Office action is in response to applicant’s communication filed on September 16, 2019.
In a previous Office action dated March 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion.
For the reasons discussed below, 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. Applicant’s voluntary amendment to the Identification of Goods is acceptable and made part of the record.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – FINAL
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.
Applicant has applied to register the mark HDC in stylized form for “Clothing, namely, shirts, jackets and hats, excluding athletic clothing” in International Class 025. The registered mark is HDC in stylized form for “Athletic clothing, namely, shirts, pants, girdles and tights” in International Class 025.
Similarity of the Marks
In the present case, the word portions of the marks are identical in that both marks are HDC. The fact that the marks differ in stylization does not obviate a finding of likelihood of confusion. The word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Therefore, the marks are confusingly similar.
Applicant argues that the “likelihood of confusion is remote” because the relevant marks “are both stylized logos that are very different in appearance.” This argument is unpersuasive. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, the only difference in applicant’s and registrant’s marks is the stylization of the lettering. This difference in stylization fails to distinguish the marks as the stylizations are not so distinctive as to create a commercial impression in the minds of purchasers that is separate and apart from the word portion itself. The word portion of the marks are identical in terms of commercial impression such that the average purchaser, who retains a general rather than specific impression of trademarks, who encounters these marks would be likely to assume a connection between the parties. Therefore, the difference in stylization does not obviate the similarity of the marks in this case as they are more similar than they are dissimilar.
Applicant argues that the analysis and finding in In re TSI Brands Inc. should be followed in this case. This argument is unpersuasive and this case is distinguishable from In re TSI Brands Inc.. In that case, the marks in question also contained design elements and the Board determined that the marks were more “akin to pure design marks rather than simply stylized displays of word marks.” In re TSI Brands Inc., 67 USPQ2d 1657, 1663 (TTAB 2002). In addition, applicant’s mark included additional wording which the Board found to be “a significant element of applicant’s mark.” Id. at 1662. In the case at bar, neither applicant’s nor registrant’s marks contain design elements or additional wording to distinguish the respective marks, which each consist solely of the identical wording HDC. Furthermore, the record in In re TSI Brands Inc. included evidence of third-party registrations of marks for the same or similar goods containing the wording “AK” which suggested that the relevant mark was weak and entitled to a more narrow scope of protection.
In the case at bar, in an effort to support its argument that the wording HDC is weak, applicant has submitted a list of third-party registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Similarity of the Goods
Applicant argues that “the explicit exclusion of athletic clothing from the application mitigates any potential confusion.” This argument is unpersuasive. Despite applicant’s amendment to the identification of goods to exclude athletic clothing, the various clothing items are very closely related. In support of this assertion, the trademark examining attorney has attached 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 clothing goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein 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).
Finally, applicant argues that the goods are different. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Summary
In sum, the similarities between the marks and the relatedness of the respective goods are such that it is likely consumers will mistakenly believe the goods emanate from the same source.
Accordingly, the refusal of registration pursuant to Section 2(d) of the Trademark Act is made final.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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)
/Mariam Aziz Mahmoudi/
Trademark Examining Attorney
LO 115
United States Patent & Trademark Office
Tel. (571) 272-9733
mariam.mahmoudi@uspto.gov
RESPONSE GUIDANCE
