To: | Colby West LLC (gavin@invigorlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88277052 - WONDERLAND GEAR EXCHANGE - N/A |
Sent: | 4/12/2019 12:57:03 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88277052
MARK: WONDERLAND GEAR EXCHANGE
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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: Colby West LLC
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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: 4/12/2019
Summary of Issues Applicant Must Address:
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5434579 (WONDERLAND SURFBOARDS), 5434578 (WONDERLAND SNOWBOARDS), 5434576 (WONDERLAND SKATEBOARDS), and 5697901 WONDERLAND CLOTHING COMPANY). 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 so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
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.
Comparison 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
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).
In this case, the applied-for mark is WONDERLAND GEAR EXCHANGE. The registered marks, all owned by the same registrant, are:
WONDERLAND SURFBOARDS
WONDERLAND SNOWBOARD
WONDERLAND SKATEBOARDS
WONDERLAND CLOTHING COMPANY
All of the marks share the wording “WONDERLAND”.
Though applicant’s mark WONDERLAND GEAR EXHANGE differs from the registered mars as to the wording “GEAR EXCHANGE,” the shared wording “WONDERLAND” is dominant in all of the marks (and thus more likely to cause confusion) because it is the only wording that is not merely descriptive of the parties’ goods and services.
All of the additional wording in the registrations is correctly disclaimed as merely descriptive of registrant’s goods and services. 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 and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
Similarly, applicant’s additional wording “GEAR EXCHANGE” is also merely descriptive of and generic for applicant’s goods and services. Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
The attached evidence from AHDictionary.com shows that “GEAR” can refer to “equipment, such as tools or clothing, used for a particular activity” and “EXCHANGE” can refer to “a place or network for exchanging things” or “to give something in return for something received.” Thus, this wording merely describes characteristics of applicant’s services, namely, that applicant’s “retail consignment stores featuring used outdoor recreational equipment” and “rental of ski equipment; [and] rental of snowboarding equipment” involves an “EXCHANGE” or store that sells and rents “GEAR” or the equipment used for outdoor recreation. Thus, the wording “GEAR EXCHANGE” is less significant in terms of affecting the mark’s commercial impression, and renders the wording “WONDERLAND” the more dominant element of the mark.
For these reasons, the marks are confusingly similar.
Comparison of the Goods and Services
Applicant’s goods and services are identified as:
Class 35: Retail consignment stores featuring used outdoor recreational equipment
Class 41: Rental of ski equipment; Rental of snowboarding equipment
Registrant’s goods are identified in Reg. No. 5434579 (WONDERLAND SURFBOARDS) as:
Class 28: Surfboard carrier worn on the body; Surfboard fins; Surfboard storage rack; Surfboards; Bags especially designed for surfboards; Bags especially designed for skis and surfboards; Leashes for surfboards; Longboard surfboards; Paddle surfboards; Paddles for use with surfboards; Traction pads for surfboards
Registrant’s goods are identified in Reg. No. 5434578 (WONDERLAND SNOWBOARDS) as:
Class 28: Snowboard decks; Snowboards; Bindings for snowboards; Protective padding for snowboarding
Registrant’s goods are identified in Reg. No. 5434576 (WONDERLAND SKATEBOARDS) as:
Class 28: Skateboard decks; Skateboard grip tapes; Skateboard trucks; Skateboards; Snowboard bindings; Snowboards; Surfboard fins; Surfboards; Wakeboards; Bags especially designed for surfboards; Bags for climbers specially adapted for holding climbing equipment; Equipment for skateboard parks for skateboarding, inline skating, and BMX freestyle biking, namely, ramps; Leashes for surfboards; Longboard skateboard trucks; Longboard skateboard wheels; Longboard surfboards; Mountaineering climbing belts; Mountaineering and rock climbing equipment, namely, climbing cams and anchors made of metal; Paddle surfboards; Protective padding for skateboarding; Protective padding for snowboarding; Traction pads for surfboards
Registrant’s goods are identified in Reg. No. 5697901 (WONDERLAND CLOTHING COMPANY) as:
Class 25: Bottoms; footwear; tops
The question of likelihood of confusion is determined 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 Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. 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).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.
Further, 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).
Applicant’s “retail consignment stores featuring used outdoor recreational equipment” encompasses all types of outdoor recreational equipment, including registrant’s surfboards, snowboards, skateboards, and clothing.
Similarly, applicant’s “rental of ski equipment” can encompass registrant’s “bags especially designed for skis” in Reg. No. 5434579 as well as “bottoms, footwear [and/or] tops” in Reg. No. 5697901 given that ski equipment can include clothing and footwear specially designed for skis (e.g., ski boots, ski jackets, ski bibs, ski pants, etc.).
Applicant’s “rental of snowboarding equipment” can encompass registrant’s snowboarding goods in Reg. No. 5434578.
The attached Internet evidence consists of webpages from the following sources:
http://www.rei.com/used/shop/gear (REI)
http://www.basspro.com/shop/en/bargain-cave-sale-and-clearance (Basspro)
http://hiconsumption.com/2018/09/best-used-outdoor-gear-stores-online/ (North Face Renewed)
This evidence establishes that (1) the same entity commonly provides retail store services offering used outdoor recreational equipment as well as their own brand of outdoor gear and markets these goods and services under the same mark (e.g., REI, Basspro and North Face); (2) these goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, namely, registrant’s outdoor gear can commonly be obtained from outdoor gear rental and retail stores (e.g., REI, Basspro, North Face); and (3) the goods and services are similar or complementary in terms of purpose or function, namely, as explained above, applicant’s outdoor gear retail store and rental services can encompass at least one of the goods identified by registrant in each registration. Thus, applicant’s and registrant’s goods and 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).
Accordingly, applicant’s services are highly related to registrant’s goods. Accordingly, confusion is likely between applicant’s mark WONDERLAND GEAR EXHANGE and registrant’s marks WONDERLAND SURFBOARDS, WONDERLAND SNOWBOARD, WONDERLAND SKATEBOARDS, and WONDERLAND CLOTHING COMPANY – especially given that consumers might view applicant’s WONDERLAND GEAR EXHANGE as a place to exchange gear made by registrant’s WONDERLAND goods.
Applicant should note the following additional potential ground for refusal.
Prior-Filed Pending Applications
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below. Compliance with the requirement below will not, however, overcome the refusals discussed above.
Disclaimer Required
In this case, applicant must disclaim exclusive use to the wording “GEAR EXCHANGE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from AHDictionary.com shows that “GEAR” can refer to “equipment, such as tools or clothing, used for a particular activity” and “EXCHANGE” can refer to “a place or network for exchanging things” or “to give something in return for something received.” Thus, this wording merely describes characteristics of applicant’s services, namely, that applicant’s “retail consignment stores featuring used outdoor recreational equipment” and “rental of ski equipment; [and] rental of snowboarding equipment” involves an “EXCHANGE” or store that sells and rents “GEAR” or the equipment used for outdoor recreation.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GEAR EXCHANGE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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.
/Parker Howard/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
571-272-6548
Parker.Howard@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.