To: | GOLFZONDECA INC. (yshgroup@ipfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88273675 - GB - 123027-0264T |
Sent: | August 03, 2019 04:36:22 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88273675
Mark: GB
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Correspondence Address: |
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Applicant: GOLFZONDECA INC.
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Reference/Docket No. 123027-0264T
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 03, 2019
This Office action is supplemental to and supersedes the previous Office action issued on April 09, 2019 and the Examiner’s Amendment dated July 16, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, the trademark examining attorney omitted a Section 2(d) refusal for a likelihood of confusion for an already registered mark, which is one of the benefits of receiving federal trademark protection.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. Applicant must address all issues raised in this Office action.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal – Likelihood of Confusion
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is GB, with a design, for a variety of goods, but in relevant part includes, “Downloadable electronic publications in the nature of magazines in the field of golf”, in International Class 09.
Registration No. 3381191 is GB, in standard characters, for “Magazines in the field of golf”, in International Class 16.
Registration No. 3381513 is GB, with a design, for “Magazines in the field of golf”, in International Class 16.
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 the present case, applicant’s mark is GB and registrant’s marks are GB. Thus, the word portion of the marks are identical. 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 terms of the design elements in applicant’s mark and in Registration No. 3381513, these design elements are not the dominant elements of the mark. When evaluating a composite mark consisting of words and a design, 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. 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). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the design element in applicant’s mark is just as a common carrier of a circle, and the design element in the registered mark is also of a common carrier of a rectangle. Neither of these designs are sufficiently distinctive to alter the mark’s overall commercial impression from that engendered by the identical wording in common: GB. Further, despite the mark's design element, consumers will use GB to refer to or request the associated goods. Thus, GB is the applied-for mark's dominant element and source-indicating essence, and the fact that the marks have a design element does not obviate the likelihood of confusion.
Therefore, the marks are confusingly similar.
Looking at the goods, applicant’s downloadable electronic publications in the nature of golf and registrant’s magazines in the field of golf are related in that the subject matter is identical, and magazines are a form of publications and can come in multiple forms, including printed and digital/electronic. The attached evidence from Golf Digest, Golf All Access, and Golf World Magazine shows entities that provide both printed magazines as well as electronic publications, all in the field of golf.
Thus, applicant’s and registrant’s goods are related.
Use of the confusingly similar marks in relation to the related goods would lead to a likelihood of confusion. Accordingly, given the similarity of applicant’s mark to registrant’s mark, and the related nature of the goods those marks identify, there is a likelihood of source confusion. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
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 nonfinal Office action
Galante, Josh
/Josh Galante/
Trademark Examining Attorney
Law Office 127
(571) 272-4310
josh.galante@uspto.gov
RESPONSE GUIDANCE