UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION 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: 6/2/2019

 

The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2019), and has determined that the application cannot be advanced at this time, for the reasons detailed in this communication.

SUBSTANTIVE REFUSAL

REGISTRATION REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed this application on March 15, 2019, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2012), based on its allegation of a bona fide intention to use the mark “VELOCITYFLEX,” to indicate the source of goods in International Class 19.  

Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject marks of U.S. Registration No. 3959675, issued on May 10, 2011, and U.S. Registration No. 3967617, issued on May 24, 2011 (copies are attached hereto).  Id. § 1052(d); see TMEP § 1207.01.  The two cited registrations are held by one owner. 

The cited registered marks are (1) “VELOCITYROLL,” the subject of Registration No. 3959675, used to indicate the source of rubber flooring, and (2) “VELOCITYTILE,” the subject of Registration No. 3967617, used to indicate the source of “Athletic flooring; Rubber floor tiles.” 

Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services.  15 U.S.C. § 1052(d); see TMEP § 1207.01.  In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark.  476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor.  In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010).  In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely.  See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.    

a.        RELATEDNESS OF GOODS, CHANNELS OF TRADE & CLASSES OF CONSUMERS

For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018). 

Here, the comparison is between the following:

Goods in this application:

Flooring, namely, rubber and synthetic non-metal flooring.

Goods in U.S. Registration No. 3959675:

Rubber flooring.

Goods in U.S. Registration No. 3967617:

Athletic flooring; Rubber floor tiles.

Here, rubber flooring is explicitly listed in this application and in Registration No. 3959675.  In this regard, these goods are legally identical.

Where the listed goods in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type, and that the identified goods are offered in all normal channels of trade, and to all potential purchasers.  In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii).    

The listed “flooring, namely, rubber and synthetic non-metal flooring” in this application encompasses the more narrowly identified “rubber floor tiles” in Registration No. 3967617.  For trademark purposes, these goods are legally identical.

Where the goods are legally identical, it must be presumed that the channels of trade and classes of purchasers are the same.  In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”); see TMEP § 1207.01(a)(iii).

With respect to “synthetic non-metal flooring” in this application and “athletic flooring” in Registration No. 3967617, the attached evidence, comprised of digital images of website pages of flooring manufacturers, supports a determination that these types of goods are commonly marketed without limitation or restrictions in connection with at least one source identifier by third parties, and are related goods.  See attached Internet evidence.  

In considering the channels of trade and classes of purchasers, because there are no limitations in the cited registration and the subject application, it is presumed that the respective goods travel in all normal channels of trade and are offered to all potential relevant consumers.  In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017) (Fed. Cir. 2017) (“Likelihood of confusion must be resolved on the basis of the goods named in the registration and, in the absence of specific limitations in the registration, on the basis of all normal and usual channels of trade and methods of distribution.”) (internal quotation omitted). 

In view of the foregoing analysis, the respective goods are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.

B.        Comparison of the Marks

For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety.  Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014).  In addition, in comparisons such as this one, when the “marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”  Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992). 

Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, “but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.”  In re Davia, 110 U.S.P.Q.2d 1810, 1813 (TTAB 2014).  Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks.  See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b). 

In the comparison analysis, while marks must be compared in their entireties, descriptive, generic and otherwise incapable matter typically cannot provide sufficient distinctiveness to alter the commercial impression of the mark and is therefore afforded less consideration.  In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999); see TMEP § 1207.01(b)(viii).  Therefore, greater weight is often given to the distinctive literal portions of the mark, i.e., arbitrary, fanciful and suggestive terms, over the non-distinctive portions of a mark, i.e., descriptive and generic terms and minor design elements.  TMEP § 1207.01(c)(ii). 

“[I]t has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate a likelihood of confusion.”  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980); see TMEP § 1207.01(b).  “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.”  In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007).  The Board has held this “especially true” where the application and registration are for goods that “may be referred to or recommended by word of mouth.”  Id. (citing Miles Labs., Inc. v. Whorton Pharmacal Co., 199 U.S.P.Q. 758 (TTAB 1978)).

In comparison, the marks resemble each other.  Most significantly, Applicant’s applied-for mark, VELOCITYFLEX, and the cited registered mark, VELOCITYROLL and VELOCITYTILE, are compound marks consisting of two terms, and share the same first term, “VELOCITY,” defined in the relevant context as “rapidity or speed of motion; swiftness,” Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto), which is inherently distinctive as suggestive in relation to the respective goods.  The term “VELOCITY” would share the same meaning or connotation to the relevant consumer. 

The marks all share the same construction.  Following the first term VELOCITY, the latter term of Applicant’s proposed mark, FLEX, defined in the relevant context as “flexibility: a schedule with a lot of flex,” Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto), and the latter term of the cited registered marks “ROLL” and “TILE,” have nominal commercial significance, with the former describing a characteristic of the goods, and the latter terms naming the goods. 

Additionally, Applicant’s applied-for mark, VELOCITYFLEX, and the cited registered mark, VELOCITYROLL and VELOCITYTILE, are presented in standard character form or the typeset lettering equivalent.  As to appearance, the rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color.  In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008).  Therefore, in actual use, both marks may be displayed in a same manner of font, style, color and size.  In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).

Based on settled precedence, VELOCITY is the dominant term of the marks, and as this shared term is the first term of all the marks, enhances the likelihood of confusion between the marks.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (holding the marks VEUVE ROYALE and VEUVE CLICQUOT PONSARDIN confusingly similar) (“The presence of this strong distinctive term as the first word in both parties’ marks renders the marks similar.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 U.S.P.Q.2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks “CENTURY 21” and “CENTURY LIFE OF AMERICA,” consumers must first notice the identical lead word); Presto Prods Inc. v. Nice-Pak Prods, Inc., 9 U.S.P.Q.2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). 

Given that one owner holds both registrations, the relevant consumer may be familiar with the VELOCITY-brand of flooring, and may assure VELOCITYFLEX is another derivative line under the VELOCITY-formative marks, as well.

The focus is on the average purchasers who do not memorize marks and “there is a tendency for individuals to equate a new mark or experience with one that they have long experienced without making an effort to ascertain whether or not they are the same marks.”  Cumberland Packing Corp. v. Estee Corp., 224 U.S.P.Q. 50, 52 (TTAB 1984).

Therefore, ordinary consumers familiar with the VELOCITY-formative brand of flooring goods would focus on the VELOCITY portion of Applicant’s “VELOCITYFLEX” mark and would likely be confused as to source of similar goods.  Based on governing authority and guidance, despite the “FLEX” portion at the end of Applicant’s proposed mark, it is highly unlikely that consumers would differentiate Applicant’s proposed mark from the “VELOCITY”-formative marks on the same or similar goods.

Keeping in mind that the marks in this comparison are used on identical goods, the necessary degree of similarity between the marks is less than if the goods had only been related.  Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992).  The differences between the marks are not sufficient to distinguish the marks.

In sum, Applicant’s mark sufficiently resembles the cited registered marks that, if used on the same and related goods, confusion would be likely to occur.

Viewed in their entireties with the differences evaluated, the marks are similar in appearance, sound and meaning, and would create similar commercial impressions on the minds of purchasers.  Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002).  Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.   

Based on a determination that the marks are similar and the goods are in part legally identical and in part strongly related, and the evidentiary showing and presumption that the goods move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered marks.

Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.   Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

Please contact the undersigned attorney with any questions.

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/2/2019 FOR U.S. APPLICATION SERIAL NO. 88342684

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/2/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.