UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88361790
MARK: TRACKER
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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: White River Marine Group, 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: 6/14/2019
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.
ADVISORY: PRIOR-FILED APPLICATIONS
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 marks in the referenced applications. 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.
Applicant may elect not to respond to the prior-filed application advisory, but must respond to the below refusal and requirements to avoid abandonment.
U.S. Registration No. |
Mark |
Goods |
4607341 |
TRACKER |
IC 028: Treestands for hunting |
4004840 |
TRACKER |
IC 025: money belts; gloves; mittens; woolen caps; hats; scarves; slippers, as well as goods in Classes 009, 016, and 018 |
1927534 |
TRACKER |
IC 012: supports for roof-mounted racks for vehicles |
1074959 |
TRACKER |
IC 012: Tires |
4615794 |
TRAKKER |
IC 012: Heavy off-road trucks |
3595239 |
TRAKKER |
IC 007: Winches |
3072614 |
TRAKOR |
IC 007: Snow grooming machine implements, namely plows, tillers, cutter bars and rakes and replacement parts therefor for use in connection with grooming snow. |
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Comparison of the Marks
The applied-for mark is “TRACKER” in standard characters.
The registered marks are as follows:
U.S. Registration No. |
Mark |
4607341 |
TRACKER, in standard characters |
4004840 |
TRACKER, in standard characters |
1927534 |
TRACKER, in a typed drawing |
1074959 |
TRACKER, in a typed drawing |
4615794 |
TRAKKER, in stylized form |
3595239 |
TRAKKER, in standard characters |
3072614 |
TRAKOR, in standard characters |
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).
As to:
4607341 |
TRACKER, in standard characters |
4004840 |
TRACKER, in standard characters |
1927534 |
TRACKER, in a typed drawing |
1074959 |
TRACKER, in a typed drawing |
Therefore, the marks are confusingly similar.
As to:
4615794 |
TRAKKER, in stylized form |
3595239 |
TRAKKER, in standard characters |
3072614 |
TRAKOR, in standard characters |
Based on the above, the marks are confusingly similar.
Comparison of the Goods
Applicant identifies the following:
IC 004: Engine oils; lubricants
IC 007: Replacement parts for vehicles, suspension systems, transmissions, electrical systems
IC 009: Protective wear, namely, goggles, helmets
IC 012: Vehicles accessories, namely, bed extenders, hood racks, brush guards, gun mounts
IC 025: Clothing, namely, hats, caps being headwear, shirts, t-shirts
The registrations identify the following goods:
U.S. Registration No. |
Mark |
Goods |
4607341 |
TRACKER |
IC 028: Treestands for hunting |
4004840 |
TRACKER |
IC 025: money belts; gloves; mittens; woolen caps; hats; scarves; slippers, as well as goods in Classes 009, 016, and 018 |
1927534 |
TRACKER |
IC 012: supports for roof-mounted racks for vehicles |
1074959 |
TRACKER |
IC 012: Tires |
4615794 |
TRAKKER |
IC 012: Heavy off-road trucks |
3595239 |
TRAKKER |
IC 007: Winches |
3072614 |
TRAKOR |
IC 007: Snow grooming machine implements, namely plows, tillers, cutter bars and rakes and replacement parts therefor for use in connection with grooming snow. |
In this case, the application uses broad wording to describe various goods, which presumably encompasses all goods of the type described, including registrants’ more narrow goods. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
Specifically, applicant’s broadly worded “Replacement parts for vehicles” encompasses the following goods:
1927534 |
TRACKER |
IC 012: supports for roof-mounted racks for vehicles |
1074959 |
TRACKER |
IC 012: Tires |
3595239 |
TRAKKER |
IC 007: Winches |
3072614 |
TRAKOR |
IC 007: Snow grooming machine implements, namely plows, tillers, cutter bars and rakes and replacement parts therefor for use in connection with grooming snow. |
Applicant’s “hats, caps being headwear” encompass the woolen caps and hats in the following registration:
4004840 |
TRACKER |
IC 025: money belts; gloves; mittens; woolen caps; hats; scarves; slippers, as well as goods in Classes 009, 016, and 018 |
Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
The attached Internet evidence, consisting of screenshots from third-party websites shows establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark, and/or 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. Thus, 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). For example, applicant will note the following:
· Hunting tree stands and gun mounts:
o http://www.ganderoutdoors.com/search?q=gun+rack&lang=default
o http://www.ganderoutdoors.com/hunting/treestands-blinds
· Off-road trucks and various vehicle parts:
o http://www.cat.com/en_US/products/new/equipment.html
o http://www.cat.com/en_US/products/new/parts.html
o http://www.deere.com/en/construction/
o http://www.deere.com/en/parts-and-service/parts/construction-parts/
o http://www.kubotausa.com/parts
· Various clothing items
o http://www.carhartt.com/category/carhartt-men
o http://www.dickies.com/mens-clothing/
o http://www.dickies.com/accessories/
o http://www.columbia.com/mens-clothing/
Summary – Likelihood of Confusion
In light of the similarities between the marks and the relatedness of the goods, it is likely that consumers who encounter the parties’ goods will falsely conclude that they originate from the same source.
Based on the foregoing, registration is refused under Trademark Act Section 2(d) in Classes 007, 012, and 025.
The wording “Replacement parts for vehicles, suspension systems, transmissions, electrical systems” in the identification of goods for International Class 007 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass various goods in Classes 007, 009, and 012.
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
However, while the word “parts” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a).
For examples of acceptable identifications for parts, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
The wording “bed extenders, hood racks, brush guards, gun mounts” in the identification of goods is indefinite and must be clarified to indicate the type of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording 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.
Applicant may substitute the following wording, if accurate:
IC 004: Engine oils; {specify type, e.g., industrial, automotive, all purpose, etc.} lubricants
IC 005: skin lubricants for athletes to prevent skin chafing
IC 007: Replacement parts for vehicles, namely, {specify goods, e.g., spark plug wires for land vehicles, power valve for carburetors, etc.}; transmissions other than for land vehicles; electrical systems comprised of {specify goods, e.g., electrical motor not for land vehicles, electricity generators that may also be used as electric motors for vehicles, etc.}
IC 009: Protective wear, namely, {specify type of goggles, e.g., dust protective, safety, etc.} goggles, helmets; electrical systems comprised of {specify goods, e.g., electric accumulators for vehicles, electric batteries for powering electric vehicles, etc.}
IC 012: Vehicles accessories, namely, truck bed extenders, hood {specify types, e.g., luggage, cargo, gun, etc.} racks, brush guards being {specify goods, e.g., automobile bumper guards, vehicle custom grills, etc.}, gun mounts being {specify goods e.g., gun racks for vehicles, etc.}; Replacement parts for vehicles, namely, {specify goods, e.g., structural repair parts for motor vehicles, etc.}; suspension systems for {specify type of vehicle, e.g. bicycles, automobiles}; transmissions for land vehicles; electrical systems comprised of {specify goods, e.g., electric motors for land vehicles, etc.}
IC 025: Clothing, namely, hats, caps being headwear, shirts, t-shirts
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant should note the following additional requirements.
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 6 classes; however, applicant submitted fees sufficient for only 5 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.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
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.
/Sarah E. Kunkleman/
Trademark Examining Attorney
Law Office 105
571-272-6151
sarah.kunkleman@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.