Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  December 06, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 23, 2019.

 

In a previous Office action(s) dated June 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s):  Amendment to Identification of Goods and/or Services.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: Amendment to Identification of Goods and/or Services.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Trademark Act Section 2(d) Refusal – Likelihood of Confusion

Trademark Act Section 2(d) Refusal – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5091694 and 569523.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applied for mark is SPEARHEAD for the following goods:

 

Class 1:

 

Agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides; horticultural chemicals, except fungicides, herbicides, insecticides and parasiticides; biochemicals, biologicals, additives, fertilizers and nutrients for agricultural and horticultural use; microbial formulations for use in agriculture to improve plant and soil quality; microbial formulations for stimulation of growth and management of disease in plants, trees and vines; biological preparations for use in agriculture and horticulture to improve plant and soil quality; soil additives for agricultural use; biological preparations for the treatment of seeds for use in agriculture and horticulture; nutritive additive to enhance the biological activity of water, soil, seeds and plants for purposes of fertilization; plant nutrition preparations

 

The registered mark is SPEAR and design for the following goods:

 

Class 5:

 

Pesticides

 

The registered mark is SPEAR for the following goods:

 

Class 5:

 

Insecticides

 

The test for determining likelihood of confusion is the same for certification marks – the du Pont analysis.  In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007)); see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  However, because a certification mark owner does not use the mark itself, the likelihood of confusion analysis is based on a comparison of the mark as applied to the goods and/or services of the certification mark users, including the channels of trade and classes of purchasers.  In re Accelerate s.a.l., 101 USPQ2d at 2049 (quoting Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d at 1559-60); see also Jos. S. Cohen & Sons Co. v. Hearst Magazines, Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955).

 

Similarity of the Marks

 

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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). As such, the wording in the registered mark with a design is dominant over the design because it is what consumers will use to call for the goods.

 

Here, the applied for mark is entirely encompassed by the registered marks. This creates as similarity in sound, appearance, and meaning. Moreover, the general commercial impression of the marks is similar as a spearhead is part of a spear.

 

Applicant’s argument that the applied for mark and the registered marks are significantly dissimilar in sound because one is comprised of two syllables and the other is only one is unpersuasive. Specifically, one must annunciate the word SPEAR to say SPEARHEAD. As such the first syllable is identical and therefore a similar sound is created.

 

Applicant’s argument that because the registered mark has a spear design mark this distinguishes the two marks is unpersuasive. Specifically, applicant has applied for the mark SPEARHEAD in standard character. As such, the applied for mark could appear in an identical stylization as the registered mark. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Applicant’s argument that the applied for mark and the registered mark are distinguishable because the applied for mark could have a slightly different meaning and commercial impression is unpersuasive. The attached dictionary from http://www.merriam-webster.com/dictionary/spearhead shows that the first definition of a spearhead is “the sharp-pointed head of a spear”. As such the commercial impression of and the meaning of the marks is similar.

Applicant’s argument that because other marks have been allowed to register applicant should be allowed to register is unpersuasive. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

As such, the marks make similar commercial impressions and are confusingly similar.

 

Relatedness of the Goods

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The previously attached and the attached Internet evidence, consisting of screen shots from third parties, establishes that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.

 

Ace Hardware

·         http://www.acehardware.com/departments/lawn-and-garden/lawn-care

·         http://www.acehardware.com/departments/lawn-and-garden/gardening

·         http://www.acehardware.com/search?query=insecticides

·         http://www.acehardware.com/search?query=fungus

·         http://www.acehardware.com/search?query=snails

 

TrueValue

·         http://www.truevalue.com/shop/farm-ranch-supplies/farm-supplies-hardware/pasture-seed-farm-feed

·         http://www.truevalue.com/shop/lawn-garden/lawn-garden-care

·         http://www.truevalue.com/shop/lawn-garden/pest-control

·         http://www.truevalue.com/catalogsearch/result/?q=snails

·         http://www.truevalue.com/catalogsearch/result/?q=fungus

 

Burpee

·         http://www.burpee.com/gardening-supplies/

·         http://www.burpee.com/gardening-supplies/fertilizers/

·         http://www.burpee.com/gardening-supplies/flower-fertilizers/

·         http://www.burpee.com/gardening-supplies/pest-control/

 

Gurneys Seed & Nursery Co.

·         http://www.gurneys.com/

·         http://www.gurneys.com/category/plant-foods-and-fertilizers

·         http://www.gurneys.com/category/garden-insect-controls

·         http://www.gurneys.com/category/plant-disease-control

 

Wayside Gardens

·         http://www.waysidegardens.com/fertilizer-supplies/c/WG_Supplies_Fertilizer/

·         http://www.waysidegardens.com/pest-control-supplies/c/WG_Supplies_Pest_Control/

 

Great Garden Supply

·         http://www.greatgardensupply.com/

·         http://www.greatgardensupply.com/categories/gardening/fertilizers-plant-health.html

·         http://www.greatgardensupply.com/categories/gardening/weed-pest-control.html

 

Applicant’s arguments that because the goods are different they are separable is unpersuasive. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes and registration is refused.  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).

Response Guidelines

 

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).

 

Please 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(s) and/or requirement(s) 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. 

 

 

/Grace Duffin/

Trademark Examining Attorney

Law Office 120

571-270-7069

Grace.Duffin@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 06, 2019 for

U.S. Trademark Application Serial No. 88371878

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Grace Duffin/

Trademark Examining Attorney

Law Office 120

571-270-7069

Grace.Duffin@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 06, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”