To: | Backcountry.com, LLC (trademarks@ipla.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88310517 - STOIC - N/A |
Sent: | 3/22/2019 7:54:40 PM |
Sent As: | ECOM121@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88310517
MARK: STOIC
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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: Backcountry.com, 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: 3/22/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The stated refusal refers to the following goods and does not bar registration for the other goods:
“Cutlery, namely, knives, forks, spoons, and sporks; portable pots and pans for camping; camping grills; cookware, namely pots and pans; beverage pint drinking glasses, glassware, namely, drinking growlers, mugs; coffee tumblers; flasks; stainless steel insulated bottles; stainless steel water bottles sold empty; non-electric pots and pans; non-electric portable coolers, non-electric french press coffee makers; backpack hydration systems consisting of a pack, a reservoir, and a mouthpiece connected to the reservoir by a tube; cooking utensils, namely, spatulas, graters, strainers, serving spoons, cooking spoons, ladles, cutting boards, whisks, tongs, chopsticks; condiment containers; dish scrubbers; spice shakers”.
Standard of Analysis for Section 2(d) Refusal
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.
Applicant seeks to register the mark STOIC for the following applicable goods: “Cutlery, namely, knives, forks, spoons, and sporks; portable pots and pans for camping; camping grills; cookware, namely pots and pans; beverage pint drinking glasses, glassware, namely, drinking growlers, mugs; coffee tumblers; flasks; stainless steel insulated bottles; stainless steel water bottles sold empty; non-electric pots and pans; non-electric portable coolers, non-electric french press coffee makers; backpack hydration systems consisting of a pack, a reservoir, and a mouthpiece connected to the reservoir by a tube; cooking utensils, namely, spatulas, graters, strainers, serving spoons, cooking spoons, ladles, cutting boards, whisks, tongs, chopsticks; condiment containers; dish scrubbers; spice shakers”.
The registered mark STOÏK’D (U.S. Registration No. 5569890) is for “sleeping bag pads”.
Similarity of the Marks
In a likelihood of confusion determination, the 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).
In the present case, applicant’s mark is STOIC and the registrant’s mark is STOÏK’D. The marks are similar in appearance, sound, and commercial impression.
Moreover, marks may be confusingly similar in appearance where similar terms or similar parts of terms 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 the present case, applicant’s mark STOIC creates a similar overall commercial impression to the registrant’s mark STOIK’D because the marks both begin with the literal elements “STOI” followed by phonetic equivalent literal elements “C” and “K”. See attached Internet evidence from Merriam-Webster. The additional literal elements “’D” and addition of a diacritic to the literal element “I” in the registrant’s mark does not alter the overall similar appearance and commercial impression between the marks.
Secondly, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). The addition of “’D” to the registrant’s mark only slightly alters the overall sound of the registered mark when compared to applicant’s mark. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Based on the foregoing, the applicant’s applied-for mark and the registrant’s mark are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the attached Internet evidence from Coleman, Cabela’s, and REI Co-op establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. The evidence also demonstrates 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. For example, the attached evidence indicates that companies who offer a wide variety of camping and kitchenware such as applicant’s cutlery, namely, knives, forks, spoons, and sporks; portable pots and pans for camping; camping grills; cookware, namely, pots and pans; beverage pint drinking glasses, glassware, namely, drinking growlers, mugs; coffee tumblers; flasks; stainless steel insulated bottles; stainless steel water bottles sold empty; non-electric pots and pans; non-electric portable coolers; backpack hydration systems; cooking utensils, dish scrubbers; etc., also offer sleeping bag pads all under the same mark. Thus, applicant’s applicable goods and the 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).
Accordingly, because applicant’s mark and the registrant’s mark are confusingly similar and the goods of the registrant are related to applicant’s goods, there is a likelihood of confusion between the marks. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act for the applicable goods.
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. If applicant responds to the refusal, applicant MUST also respond to the requirements set forth below.
IDENTIFICATION OF GOODS PARTIAL REQUIREMENT
THIS PARTIAL REQUIREMENT APPLIES TO INTERNATIONAL CLASS 021 ONLY.
Select entries from applicant’s identification of goods in International Class 021 are indefinite and must be clarified. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Secondly, select entries from the applicant’s identification of goods in International Class 021 need clarification because they are too broad and could include goods classified in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Specifically, the wording “stainless steel insulated bottles” in the identification of goods is unacceptable as indefinite because it is not sufficiently clear what the nature of the goods are. Further, the wording is overly broad and could include “stainless steel insulated baby bottles” in International Class 011 and “stainless steel insulated drinking bottles” in International Class 021. Based on applicant’s other identified goods, the suggestion has been tailored to International Class 021.
Applicant may adopt the following wording, if accurate (suggestions in bold):
Class 008: Cutlery, namely, knives, forks, spoons, and sporks; Hand tools, namely, ski and snowboard edge sharpening tools; Multi-function hand tools for ski and snowboard maintenance comprised of wrenches, screwdrivers, hex keys, pliers, and bottle openers; Multi-function hand tools for bicycle maintenance comprised of wrenches, hex keys, screwdrivers, torque drivers, knives, namely, folding knives, disc brake spreaders, bicycle repair chain hooks and breakers for bicycle chains, disc pad expanders, pliers, tire levers, and bottle openers
Class 021: Portable pots and pans for camping; Camping grills; Cookware, namely, pots and pans; Beverage pint drinking glasses, Glassware, namely, drinking growlers, mugs; Coffee tumblers; Flasks; Stainless steel insulated drinking bottles; Stainless steel water bottles sold empty; Non-electric pots and pans; Non-electric portable coolers, non-electric french press coffee makers; Backpack hydration systems consisting of a pack, a reservoir, and a mouthpiece connected to the reservoir by a tube; Cooking utensils, namely, spatulas, graters, strainers, serving spoons, cooking spoons, ladles, cutting boards, whisks, tongs, chopsticks; condiment containers; dish scrubbers; spice shakers
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may amend the identifications above to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
Applicant may 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 and requirements 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.
/Michael J. Clark/
Trademark Examining Attorney
Law Office 121
600 Dulany Street,
Alexandria, VA 22314
(571) 272-4967
michael.clark1@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.