United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88371878
Mark: SPEARHEAD
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Correspondence Address: 300 North Meridian Street, Suite 2700
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Applicant: Concentric Ag Corporation
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Reference/Docket No. 516456.3
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: December 06, 2019
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
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
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.
As such, the marks make similar commercial impressions and are confusingly similar.
Relatedness of the Goods
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/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).
/Grace Duffin/
Trademark Examining Attorney
Law Office 120
571-270-7069
Grace.Duffin@uspto.gov
RESPONSE GUIDANCE