United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88349288
Mark: RIVAL
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Correspondence Address: 937 S. COAST HIGHWAY, SUITE C202
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Applicant: CAO, MATAO
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Reference/Docket No. GoLab003
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 06, 2020
This Office Action responds to the applicant’s correspondence dated December 2, 2019.
The applicant (1) argued against the refusal to register the mark under Section 2(d) with regard to Reg. No. 4511312; (2) amended the identification of goods; and, (3) provided information regarding the goods. Nos. 2 and 3 are accepted and made part of the record.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – Class 12
The partial refusal to register is maintained and made final because of a likelihood of confusion with the mark in U.S. Registration No. 4511312. This refusal applies solely with regard to the applicant’s Class 12 goods identified, as amended, as “Electric two wheeled mobility scooters intended for commuting and recreational use.” Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
--General Principles in Determining Likelihood of Confusion
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 and/or services 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 and/or services. 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.
--Similarities Between the Marks
In the present case, applicant’s mark is RIVAL and registrant’s mark is RIVAL. These marks are identical in appearance, 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 they 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 and/or services. Id.
Therefore, the marks are confusingly similar.
--Similarities Between the Goods
In this case, the applicant’s goods identified, as amended, as “Electric two wheeled mobility scooters intended for commuting and recreational use” are related to the registrant’s goods identified as “Electrically powered wheelchairs [ and push chairs ] for use by handicapped, infirm and disabled persons; repair and replacement parts for such power wheelchairs, [ and push chairs, ] namely, wheels, axels, motors, seats, bumpers, fenders, tires, handlebar controls for power wheelchairs, [ and push chairs, ] arm rests and head rests for use with powered wheelchairs [ and push chairs ].”
The examining attorney searched the internet for wheelchairs in relation to recreational mobility scooters. Attached for the applicant’s reference are copies of representative webpages demonstrating that wheelchairs and mobility scooters for recreational use travel in the same channels of trade to the same potential customers. (See attachments).
--Conclusion
Where the marks are identical and the goods are related, confusion as to the source of the goods is likely. For the foregoing reasons, the partial refusal to register due to likelihood of confusion under Trademark Act Section 2(d) with regard to the applicant’s Class 12 goods identified as “Electric two wheeled mobility scooters intended for commuting and recreational use” is maintained and made final.
GUIDELINES REGARDING PARTIAL FINAL REFUSAL
In such case, the application will proceed for the following class only: International Class 28.
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).
/John Dwyer/
Examining Attorney
Law Office 116
571-272-9155
John.Dwyer1@uspto.gov
RESPONSE GUIDANCE
