To: | peterson, andrew l (usptotrademark@stoneslaw.net) |
Subject: | U.S. Trademark Application Serial No. 88348244 - FUZE - 2019-01014 |
Sent: | January 31, 2020 08:34:45 AM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88348244
Mark: FUZE
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Correspondence Address:
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Applicant: peterson, andrew l
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Reference/Docket No. 2019-01014
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: January 31, 2020
This letter responds to the applicant's communication filed on January 10, 2020. The applicant responded to the Office action by offering arguments in favor of registration. The following action sets forth the remaining issues for resolution.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 5262640. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Final Refusal – Section 2(d)
The marks at issue are identical versions of the term “FUZE.” Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Here, the applicant has identified antimicrobial coatings for “various surfaces,” fabrics for textile use and chemical treatment of textiles. The registered mark is for “backing for commercial carpet tiles, tufted carpets, rugs and synthetic turf.” The Office has submitted evidence that the same entity commonly manufactures/produces/provides carpets that have been treated with antimicrobial elements and that carpet backings can be made of fabric. Thus, the goods and services are related because carpet backing can be made of fabric, and because carpets can have antimicrobial properties and treatments. In fact, the applicant’s response agreed that the coatings could be applied to carpets. The evidence of record, and applicant’s own admission support the position that the goods and services are related.
In support of registration, applicant has advance several arguments, chief amongst them the assertion that there is no evidence of actual confusion between the marks. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).
The applicant also asserts that the products offered by both parties “are unique and wholly distinct,” are that the purchasers are highly skilled and sophisticated. While that might be true, it does not speak to the fact that the evidence shows that these unique goods are related, have complementary uses, and can emanate from a single source. Further, even if consumers of the compared goods and/or services 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).
For the foregoing reasons, the refusal under Section 2(d) is continued and made final. However, the applicant may elect to delete Class 5 and limit the identification of the goods and services in Classes 24 and 40 in the following manner to obviate this refusal:
Class 5: Delete class;
Class 24: Fabrics for industrial textile use, excluding carpets, rugs and carpet backing.
Class 40: Chemical treatment of industrial textile fabrics, excluding carpets, rugs and carpet backing.
Response Options
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
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).
/Susan Leslie DuBois/
Examining Attorney
Law Office 111
571.272.9154
susan.dubois@uspto.gov
RESPONSE GUIDANCE