United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88302505
Mark: RIO
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Correspondence Address: FERGUSON CASE ORR PATERSON LLP
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Applicant: B-K Lighting, Inc.
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Reference/Docket No. 101-47-051
Correspondence Email Address: |
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FINAL OFFICE ACTION
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: December 10, 2019
This Office action is in response to applicant’s communication filed on October 30, 2019.
In a previous Office action dated April 30, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion. In addition, applicant was required to satisfy the following requirement: English Translation Requirement. Furthermore, the trademark examining attorney issued a Section 2(d) advisory regarding two prior-filed applications.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: English Translation Requirement. See TMEP §§713.02, 714.04.
In addition, the Section 2(d) advisory is withdrawn because the applications abandoned. See TMEP §§713.02, 714.04.
Further, 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.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Section 2(d) Refusal – Likelihood of Confusion
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.
Applicant’s mark is “RIO” for “light fixtures, namely, parabolic floodlight” in International Class 11.
Registrant’s mark is “RIO” for, in relevant part, “Lighting tracks, downlighters, spotlights, floodlights, and fluorescent lamps” in International Class 11.
Comparison of the Marks
Applicant’s mark is “RIO” in standard characters.
Registrant’s mark is “RIO” in stylized font.
In the present case, applicant’s mark is “RIO”, and registrant’s mark is “RIO”. The literal elements of these marks are identical in 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 the literal elements 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 the response, the applicant does not present any arguments refuting the similarity of the marks.
Therefore, for all of the above mentioned reasons, the marks are confusingly similar.
Comparison of the Goods
Applicant’s mark is for “light fixtures, namely, parabolic floodlight” in International Class 11.
Registrant’s mark is for, in relevant part, “Lighting tracks, downlighters, spotlights, floodlights, and fluorescent lamps” in International Class 11.
In this case, the registration uses broad wording to describe “floodlights,” which presumably encompasses all goods of the type described, including applicant’s more narrow “light fixtures, namely, parabolic floodlight.” 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 registrant’s 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)).
In the response, applicant argues that there is no likelihood of confusion because parabolic floodlights are different than regular floodlights. Applicant, however, overlooks that 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. Moreover, as the attached Internet evidence from CTL, GE, Lithonia, Sylvania, and ViriBright demonstrates, the same entity commonly provides the relevant goods and markets the goods under the same mark. Specifically, the attached Internet evidence demonstrates that the same entity commonly provides parabolic lights, which are frequently referred to as “PAR”, as well as lighting tracks, downlighters, spotlights, floodlights, and fluorescent lamps. 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).
Additionally, applicant argues that there is no likelihood of confusion because the goods are directed to different sophisticated purchasers. Even if consumers of the compared goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
Conclusion
Because applicant’s and registrant’s marks are similar and the goods are related, there is a likelihood of confusion and applicant’s mark must be refused under Section 2(d) of the Lanham 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Brittany Colton/
Brittany Colton
Examining Attorney
Law Office 127
571-272-2572
brittany.colton@uspto.gov
RESPONSE GUIDANCE