UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88309365
MARK: SPARTAN
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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: Spartan Race, Inc.
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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: 4/1/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL
In this case, applicant has applied to register the mark “SPARTAN” for use in connection with “Resistance equipment for use in group fitness exercises, individual fitness training, cardiovascular training and muscle training, namely, sandbags made of neoprene.”
The mark in Registration No. 1984904 is “SPARTAN FOR THE COURAGEOUS IN MIND MADE” and design used in connection with, in pertinent part, the following goods, “boxing equipment, namely boxing gloves, boxing headgear, boxing protective cups, boxing heavy bags, boxing speed bags, boxing equipment bags, boxing double end bags and boxing gymnasium equipment, namely skip rope, ankle and wrist weights, chinning bars, push-up floor bars, weightlifting belts, weightlifting gloves, dumbell and barbell rack, chest pulley weights, hand grips, waist trimmer, exercise training mat, wheel exerciser, tension bender bar, neck developer, medicine ball, hand wraps, mouthpieces, target punch mitts, boxing ring, ring padding, ring ropes, turnbuckles, corner cushions, ring canvas, corner stool, ring bell and ring stairway,” among other goods.
Introduction to Section 2(d) Analysis
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 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. 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 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).
Here, applicant’s mark, “SPARTAN”, is confusingly similar to the registered mark, “SPARTAN FOR THE COURAGEOUS IN MIND MADE” and design, in sound, appearance, and overall commercial impression. Specifically, the marks sound and appear similar in that they both begin with the identical term “SPARTAN”. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Therefore, the marks sound and appear similar in that consumers will focus on, “SPARTAN”, in each of the marks as the first term in the respective marks.
The marks also share the same overall commercial impression. Specifically, the term “SPARTAN” in both marks leaves consumers with the same overall commercial impression of a person with great courage and self-discipline, characteristic of soldiers from ancient Sparta. See http://www.ahdictionary.com/word/search.html?q=Spartan.
Additionally, though the registered mark contains added features, these added features do not obviate the similarities of the marks. To begin, the added term and phrase, “TM” and “MADE IN THE U.S.A.”, are less significant because TM is a generic designator for “trademarks” and “MADE IN THE U.S.A.” is informational as indicating where registrant’s goods are made. 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. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Therefore, the added term and phrase, “TM” and “MADE IN THE U.S.A.”, are less significant because consumers will immediately recognize that this term and phrase conveys information about registrant’s mark and goods, rather than viewing this term and phrase as source-identifying.
Similarly, the added phrase “FOR THE COURAGEOUS IN MIND” in registrant’s mark also does not obviate the similarities of the marks because it is also less significant in creating a commercial impression in that it appears in tiny font below “SPARTAN”, which appears in very large font. Moreover, the phrase merely echoes the commercial impression of the term “SPARTAN” which connotes one who has great courage.
Finally, the design element in registrant’s mark does not obviate the similarities of the marks. 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)). Therefore, the word portion of the mark is dominant as the feature consumers will use when recalling the source of registrant’s goods.
Ultimately, when purchasers call for the goods of applicant and registrant using, “SPARTAN” and “SPARTAN FOR THE COURAGEOUS IN MIND MADE” and design, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods
Additionally, the compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case, applicant’s exercise sandbags are closely related to registrant’s various boxing training equipment because the goods are all used to improve one’s fitness, and entities that manufacture exercise equipment often offer a wide variety of exercise equipment, including goods similar to the parties’ goods, in the same channels of trade and under the same mark. See e.g.,
1. http://www.roguefitness.com/rogue-sandbags, http://www.roguefitness.com/weightlifting-bars-plates/barbells, http://www.roguefitness.com/crossfit-equipment (showing Rogue Fitness offers a wide variety of fitness equipment, including sandbags, dumb bells, barbell racks, medicine balls, and weighted belts, all under the same mark).
2. http://www.repfitness.com/rep-sandbags, http://www.repfitness.com/bars-plates, http://www.repfitness.com/conditioning, and http://www.repfitness.com/accessories/wraps-straps-support/belts (showing Rep Fitness offers a wide variety of fitness equipment, including sandbags, dumb bells, barbell racks, medicine balls, all under the same mark).
3. http://xdfit.com/pages/sandbags-1?_vsrefdom=adwords&gclid=EAIaIQobChMIxZPuwJ3r4AIVTFcMCh0G_Q41EAAYAyAAEgJz7fD_BwE, http://xdfit.com/collections/kevlar-weighted-vest-belt, http://xdfit.com/collections/all-xd-products (showing XD offers a wide variety of fitness equipment, including sandbags, weightlifting bars and plates, kettlebells, training mats, and lifting belts, all under the same mark).
4. http://bruteforcetraining.com/collections/shop-all/ (showing Brute Force offers a wide variety of fitness equipment, including sandbags, weighted vests, and weightlifting belts, all under the same mark).
The attached evidence establishes that goods similar to the parties’ respective goods frequently travel in the same channels of trade, and are offered to the same class of class of consumers in the same field of use. Additionally, the evidence demonstrates that consumers are accustomed to seeing businesses offer a wide variety of boxing training equipment, including various type of weights, under the same mark. As a result, consumers encountering applicant’s and registrant’s respective goods at the same time are likely to mistakenly presume the goods originate from the same source because of the relationship between the goods. Consequently, applicant’s and registrant’s respective goods are closely related under the likelihood of confusion analysis
See Registration Nos. 3485591, 5684894, 5524929, 5610974, 5625940, 5573568, 5291553, and 5042742.
This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Accordingly, 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).]
Ultimately, because the marks are confusingly similar and the goods are closely related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. Therefore, registration must be refused under Section 2(d).
Response to Section 2(d) – Likelihood of Confusion Refusal
ADVISORY: POTENTIAL SECTION 2(d) REFUSAL – ONE PRIOR PENDING APPLICATION
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.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Tiffany Y. Chiang/
Trademark Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@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.