To: | Elite Squad USA LLC (aimber@allendyer.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88299930 - ELITE X - 0130766 |
Sent: | 4/30/2019 1:49:19 PM |
Sent As: | ECOM115@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88299930
MARK: ELITE X
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CORRESPONDENT ADDRESS: ALLEN, DYER, DOPPELT & GILCHRIST, PA |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Elite Squad USA 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: 4/30/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 mark in the referenced application. 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.
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. 4725715 and 4519986. 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 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.
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).
Applicant has applied to register the mark ELITE X, in standard character form.
The mark in U.S. Registration No. 4725715 is ELITE, in standard character form.
The mark in U.S. Registration No. 4519986 is ELITE, with a design.
Applicant’s mark is highly similar to the registered marks because each possesses the identical term ELITE within the marks. It is well settled that 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).
Note, the main difference between the marks is the addition of the term “X” in applicant’s mark, however, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Lastly, the design in U.S. Registration No. 4519986 does not negate the similarity between the marks because the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Accordingly, the marks are similar under the Trademark Act.
RELATEDNESS OF THE GOODS
Applicant’s intended goods are “tablet computers” in International Class 009.
The goods in U.S. Registration No. 4725715 are “Spectacles; sunglasses, sports eyewear, anti-dazzle spectacles; spectacle frames; spectacle mountings frames; spectacle lenses; correcting lenses; contact lenses; contact lenses, optical lenses; spectacle cases; cases for contact lenses; anti-glare sunglasses; electronic agendas; magnetic data carriers being either blank or carrying recorded sound and/or image data or computer programs for providing interactive entertainment and for use as an educational tool in offering interactive training, both in the fields of arts, works of fiction, science, fashion, photography, travel, sports and fitness training, massage therapy, beauty care, cosmetics and perfumery, manicure and pedicure, hair care, nutrition, cooking, stress and anger management, meditation, singing and dancing; magnetic cards; memory chip cards; compact discs for audio-video, including read only compact discs, optical discs, optical compact discs and sound recording discs, all of the aforementioned discs being either blank or carrying recorded sound and/or image data or computer programs in the fields of arts, works of fiction, science, fashion, photography, travel, sports and fitness training, massage therapy, beauty care, cosmetics and perfumery, manicure and pedicure, hair care, nutrition, cooking, stress and anger management, meditation, singing and dancing; interactive compact discs featuring films, music, sound recordings, photographs, scanned paintings, digital animations or computer games; interactive compact discs featuring still images, scanned images or digitized texts in the fields of arts, works of fiction, science, fashion, photography, travel, sports and fitness training, massage therapy, beauty care, cosmetics and perfumery, manicure and pedicure, hair care, nutrition, cooking, stress and anger management, meditation, singing and dancing; instructional or teaching material in the form of CD-ROMs, DVDs, and software featuring instruction in arts, science, fashion, photography, travel, sports and fitness training, massage therapy, beauty care, cosmetics and perfumery, manicure and pedicure, hair care, nutrition, cooking, stress and anger management, meditation, singing and dancing; downloadable software for computer gaming, database management, text processing, video and audio recording, video and audio file processing, displaying videos and rendering audio files, digital photograph processing, searching news items online and displaying same, personnel management, online image and sound transmission, online text message transmission; downloadable electronic publications in the nature of books, magazines, newsletters, information leaflets, coupons, instruction manuals, posters, calendars in the field of arts, works of fiction, science, fashion, photography, travel, sports and fitness training, massage therapy, beauty care, cosmetics and perfumery, manicure and pedicure, hair care, nutrition, cooking, stress and anger management, meditation, singing and dancing; exposed cinematographic films; computers other than computerized equipment for billing and accounting; protective helmets and masks; walkie-talkies; telephone apparatus; telephones, including mobile telephones; video telephones; hands-free kits for telephones; telephone receivers; video game machines for use with external display screen or monitor; electrically heated hair-curlers; electrothermal hair curlers; electric flat irons” in International Class 009.
The goods in U.S. Registration No. 4519986 are “Computer hardware and software for playing computer and electronic games; computer game programs; computer games programs and software; software for computer, video and on-line games; computer games cartridges and discs; telephone games, namely, electronic game software for mobile phones; downloadable electronic publications in the nature of instruction manuals and tutorials featuring instructions for computer games, video games and electronic games; interactive multimedia computer game programs; downloadable electronic game software for use with computers; electronic games cartridges; hand-held computer games; microcomputers adapted for use in playing games; downloadable electronic Internet games; computer game programs; video and audio game programs; computer games adapted for use with television receivers; downloadable electronic games and computer games for use with or accessible by mobile and cellular phones and other wireless devices; hand-held computers for playing computer and electronic games; personal computers for playing computer and electronic games; desktop computers; desktop computers for playing computer and electronic games; laptop computers for playing computer and electronic games; tablet computers for playing computer and electronic games; software for use on computers, telephones, mobile telephones, smart phones, tablet computers, Personal Digital Assistants, televisions, set-top boxes, watches or other electronic apparatus for playing computer and electronic games; software downloaded in electronic form for use on computers, telephones, mobile telephones, smart phones, tablet computers, Personal Digital Assistants, televisions, set-top boxes, watches or other electronic apparatus for playing computer and electronic games. computer games for use on computers, telephones, mobile telephones, smart phones, tablet computers, Personal Digital Assistants, televisions, set-top boxes, watches or other electronic apparatus” in International Class 009.
In this case, the application use(s) broad wording to describe “tablet computers,” which presumably encompasses all goods and/or services of the type described, including U.S. Registration No. 4519986’s more narrow “tablet computers for playing computer and electronic games.” Similarly, U.S. Registration No. 4725715 uses broad wording to describe “computers other than computerized equipment for billing and accounting” which presumably encompasses applicant’s “tablet computers.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrants’ goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, 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 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)). Thus, applicant’s and registrants’ goods and/or services are related.
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).
Thus, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Accordingly, registration is refused under Section 2(d) of the Trademark Act.
Udeme U. Attang
/Udeme U. Attang/
Examining Attorney
Law Office 115
571-272-9286
udeme.attang@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.