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:  January 03, 2020

 

This Office action is in response to applicant’s communication filed on 11/21/19.

 

In the first Office action, dated 05/30/19, the examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) based upon a finding of a likelihood of confusion with U.S. Registration No. 4326609. In addition, the examining attorney required applicant to amend the indefinite identification of goods (Applies to Specific Goods in Class 12 ONLY).

 

In its response, dated 11/21/19, applicant submitted an amendment of the identification of goods in Class 12. The examining attorney accepts applicant’s amendment of the identification of goods and hereby makes it of record. Accordingly, the requirement for an acceptable amendment of the identification of goods is satisfied. In addition, in its response, applicant submitted arguments and evidence in support thereof, against the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 4326609. The examining attorney has carefully reviewed and considered applicant’s arguments and evidence in support thereof, and is not persuaded as they pertain to specific goods in Class 12. Accordingly, the examining attorney continues and maintains said Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 4326609 (Applies to Specific Goods in Class 12 ONLY) and hereby makes said refusal FINAL.

 

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. 4326609 (Applies to Specific Goods in Class 12 ONLY).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

FINAL REFUSAL - Section 2(d) Likelihood of Confusion Refusal – Applies to Specific Goods in Class 12 ONLY

 

Note: The instant final Trademark Act Section 2(d) Likelihood of Confusion refusal applies only to the goods listed in part as “Bicycles”; “Mini-bicycles; Scooters, namely, push scooters and motor scooters; Tricycles not being toys; Unicycles; Wagons”; “Structural parts and fittings for vehicles; Structural parts and fittings for bicycles, motorcycles, push scooters, motor scooters, tricycles not being toys, unicycles, wagons, go carts, all-terrain vehicles; Bicycle, motorcycle, push scooter, motor scooter, tricycle not being a toy, unicycle, wagon, go cart and all-terrain vehicle accessories, specially adapted for use therewith, namely, spokes, wheel hubs, stabilizers, wheels, seats, saddles, fitted seat covers, mudguards, horns, bells, pannier bags, side bags, saddle bags, luggage, luggage carriers, baskets, water bottle holders, drink holders, stands, mounted pet seats, racks for vehicles and fitted covers; Bicycle, motorcycle, tricycle not being a toy and unicycle wheel hubs; Bicycle, motorcycle, tricycle not being a toy and unicycle stabilizers; Bicycle, motorcycle, tricycle not being a toy and unicycle stands; Bicycle, motorcycle, tricycle not being a toy and unicycle frames; Bicycle, motorcycle, tricycle not being a toy and unicycle spokes; Bicycle and cycle wheels; Bicycle, motorcycle, tricycle not being a toy and unicycle seats; Bicycle, motorcycle, tricycle not being a toy and unicycle saddles; Fitted bicycle, motorcycle, tricycle not being a toy and unicycle seat covers; Bicycle, motorcycle, tricycle not being a toy and unicycle mudguards; Bicycle, motorcycle, tricycle not being a toy and unicycle horns; Bicycle and cycle bells; Pannier bags, side bags and saddle bags specially adapted for bicycles and cycles; Luggage carriers for bicycles and cycles; Pannier bags, side bags and saddle bags for motorcycles, tricycles not being toys, unicycles and bicycles; Baskets adapted for motorcycles, tricycles not being toys, unicycles and bicycles; Water bottle holders for bicycles, motorcycles, tricycles not being toys and unicycles; Tire pumps; Tire repair patches; Handle bars; Stands for bicycles, motorcycles, tricycles not being toys, unicycles and scooters; Bicycle, motorcycle, tricycle not being a toy, unicycle mounted pet seats; Strollers; Stroller hoods and covers”; “Bicycle, motorcycle, tricycle not being a toy and unicycle racks for vehicles”; “Vehicle seat protectors; Vehicle seat cushions” and “Child carrying trailers for use while exercising”.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4326609.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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

 

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).

 

In this case, applicant’s mark is RED TITAN (standard character) for goods listed in relevant part as “Bicycles”; “Mini-bicycles; Scooters, namely, push scooters and motor scooters; Tricycles not being toys; Unicycles; Wagons”; “Structural parts and fittings for vehicles; Structural parts and fittings for bicycles, motorcycles, push scooters, motor scooters, tricycles not being toys, unicycles, wagons, go carts, all-terrain vehicles; Bicycle, motorcycle, push scooter, motor scooter, tricycle not being a toy, unicycle, wagon, go cart and all-terrain vehicle accessories, specially adapted for use therewith, namely, spokes, wheel hubs, stabilizers, wheels, seats, saddles, fitted seat covers, mudguards, horns, bells, pannier bags, side bags, saddle bags, luggage, luggage carriers, baskets, water bottle holders, drink holders, stands, mounted pet seats, racks for vehicles and fitted covers; Bicycle, motorcycle, tricycle not being a toy and unicycle wheel hubs; Bicycle, motorcycle, tricycle not being a toy and unicycle stabilizers; Bicycle, motorcycle, tricycle not being a toy and unicycle stands; Bicycle, motorcycle, tricycle not being a toy and unicycle frames; Bicycle, motorcycle, tricycle not being a toy and unicycle spokes; Bicycle and cycle wheels; Bicycle, motorcycle, tricycle not being a toy and unicycle seats; Bicycle, motorcycle, tricycle not being a toy and unicycle saddles; Fitted bicycle, motorcycle, tricycle not being a toy and unicycle seat covers; Bicycle, motorcycle, tricycle not being a toy and unicycle mudguards; Bicycle, motorcycle, tricycle not being a toy and unicycle horns; Bicycle and cycle bells; Pannier bags, side bags and saddle bags specially adapted for bicycles and cycles; Luggage carriers for bicycles and cycles; Pannier bags, side bags and saddle bags for motorcycles, tricycles not being toys, unicycles and bicycles; Baskets adapted for motorcycles, tricycles not being toys, unicycles and bicycles; Water bottle holders for bicycles, motorcycles, tricycles not being toys and unicycles; Tire pumps; Tire repair patches; Handle bars; Stands for bicycles, motorcycles, tricycles not being toys, unicycles and scooters; Bicycle, motorcycle, tricycle not being a toy, unicycle mounted pet seats; Strollers; Stroller hoods and covers”; “Bicycle, motorcycle, tricycle not being a toy and unicycle racks for vehicles”; “Vehicle seat protectors; Vehicle seat cushions” and “Child carrying trailers for use while exercising” in International Class 12.

Registrant’s mark is TITAN (stylized) for goods listed as “Bicycles; Mountain bicycles” in International Class 12.

 

Here, applicant’s mark and registrant’s mark share the identical dominant and/or only source-indicating wording “TITAN”. As such, the marks are confusingly similar in general sound, appearance, meaning, connotation and commercial impression. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Furthermore, the examining attorney notes that applicant’s mark, namely, RED TITAN incorporates the entirety of registrant’s mark, namely, TITAN. However, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Additionally, the examining attorney points out that a mark in typed or standard characters, such as the applied-for mark in the instant case, 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, such as registrant’s mark in the instant case, 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”).

 

Finally, the examining attorney points out where the goods of an applicant and registrant are “similar in kind and/or closely related,” as is true in the instant case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Applicant’s Arguments in Response, Dated 11/26/19

 

First, applicant argues that it is important to take applicant’s fame, and the interplay between applicant’s famous business and applicant’s mark, into consideration when determining a likelihood of confusion between applicant’s mark and the cited mark. More specifically, applicant explains that applicant Remka owns and exploits the wildly famous Ryan’s World YouTube Channel, which has attracted over 20 Million YouTube subscribers and over 30 Billion YouTube reviews. Applicant explains that RED TITAN is the superhero character of Ryan, the main character of “Ryan’s World”. Applicant submits that this superhero persona has attributed greatly to the fame of Ryan’s World and this is evidenced by the millions of views of each video including RED TITAN. Applicant explains that it has expanded into producing consumer goods, such as toys, clothing, bedding, furniture, lighting, personal hygiene products, food items and more, branded and sold under the “RYAN’S WORLD” umbrella. Applicant argues that the examining attorney should consider that all of the branding, partnership deals, promotion and sales done by applicant under its trademarks is targeted solely to and consumed solely by children and babies. Based on the fame of Applicant, its brand and its family of famous trademarks, applicant argues that consumers will not be confused when encountering products being sold under the cited mark since all consumers associate applicant’s marks, i.e., “RED TITAN” with applicant and applicant’s larger “RYAN TOYSREVIEW” and “RYAN’S WORLD” brands.

Examining Attorney’s Rebuttal

 

The examining attorney has carefully reviewed and considered applicant’s arguments against the finding that applicant’s mark, namely, RED TITAN and registrant’s mark, namely, TITAN, are confusingly similar in general sound, appearance, meaning, connotation and commercial impression. With respect to applicant’s argument that the fame of its mark should be accorded substantial weight in the instant Trademark Act Section 2(d) likelihood of confusion analysis, the examining attorney respectfully disagrees. Pursuant to Trademark Manual of Examining Procedure (TMEP) §1207.01(d)(ix), because, in ex parte proceedings, the examining attorney is not expected to submit evidence regarding the fame of the cited mark, this factor is usually treated as neutral in such proceedings. However, this factor is usually considered more significant in inter partes proceedings. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192-93 (TTAB 2012); In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). In this case, applicant’s arguments pertaining to the fame of its mark would be more appropriately considered in the context of an inter partes proceeding, rather than in the instant ex parte proceeding.

 

Next, the examining attorney points out that applicant’s mere addition of the term “RED” onto registrant’s mark TITAN, is not sufficient to obviate a finding of a likelihood of confusion in the instant case. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Accordingly, applicant’s mark and registrant’s marks are sufficiently similar, such that consumer confusion in the marketplace is likely.

 

Comparison of the Goods

 

The compared goods 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).

 

In this case, applicant’s goods listed as “Bicycles”; “Mini-bicycles; Scooters, namely, push scooters and motor scooters; Tricycles not being toys; Unicycles; Wagons”; “Structural parts and fittings for vehicles; Structural parts and fittings for bicycles, motorcycles, push scooters, motor scooters, tricycles not being toys, unicycles, wagons, go carts, all-terrain vehicles; Bicycle, motorcycle, push scooter, motor scooter, tricycle not being a toy, unicycle, wagon, go cart and all-terrain vehicle accessories, specially adapted for use therewith, namely, spokes, wheel hubs, stabilizers, wheels, seats, saddles, fitted seat covers, mudguards, horns, bells, pannier bags, side bags, saddle bags, luggage, luggage carriers, baskets, water bottle holders, drink holders, stands, mounted pet seats, racks for vehicles and fitted covers; Bicycle, motorcycle, tricycle not being a toy and unicycle wheel hubs; Bicycle, motorcycle, tricycle not being a toy and unicycle stabilizers; Bicycle, motorcycle, tricycle not being a toy and unicycle stands; Bicycle, motorcycle, tricycle not being a toy and unicycle frames; Bicycle, motorcycle, tricycle not being a toy and unicycle spokes; Bicycle and cycle wheels; Bicycle, motorcycle, tricycle not being a toy and unicycle seats; Bicycle, motorcycle, tricycle not being a toy and unicycle saddles; Fitted bicycle, motorcycle, tricycle not being a toy and unicycle seat covers; Bicycle, motorcycle, tricycle not being a toy and unicycle mudguards; Bicycle, motorcycle, tricycle not being a toy and unicycle horns; Bicycle and cycle bells; Pannier bags, side bags and saddle bags specially adapted for bicycles and cycles; Luggage carriers for bicycles and cycles; Pannier bags, side bags and saddle bags for motorcycles, tricycles not being toys, unicycles and bicycles; Baskets adapted for motorcycles, tricycles not being toys, unicycles and bicycles; Water bottle holders for bicycles, motorcycles, tricycles not being toys and unicycles; Tire pumps; Tire repair patches; Handle bars; Stands for bicycles, motorcycles, tricycles not being toys, unicycles and scooters; Bicycle, motorcycle, tricycle not being a toy, unicycle mounted pet seats; Strollers; Stroller hoods and covers”; “Bicycle, motorcycle, tricycle not being a toy and unicycle racks for vehicles”; “Vehicle seat protectors; Vehicle seat cushions” and “Child carrying trailers for use while exercising” in International Class 12 are related to, and overlap with, registrant’s goods listed as “Bicycles; Mountain bicycles” in International Class 12. For example, applicant’s goods listed in part as “Bicycles” are identical to registrant’s goods listed as “Bicycles”, and are broad enough to encompass registrant’s goods listed as “Mountain bicycles” in International Class 12. Furthermore, many of applicant’s listed goods feature structural parts, accessories and fittings for bicycles which are encountered by consumers in the same channels of trade as bicycles.

 

The attached Internet evidence, consisting of website excerpts from Priority Bicycles, Action Wheelsport, Sun Bicycles, Husky Bicycles and TREK, establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark; and 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. Please see attached third-party website evidence.  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).

 

Third-Party Registrations Suggest Goods May Emanate from Single Source

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, “Bicycles,” “Mountain bicycles,” “Unicycles,” “Tire pumps,” “Pannier bags for bicycles” and “Cycle bells”, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Applicant’s Arguments in Response, Dated 11/26/19

 

In its response, dated 11/21/19, applicant argues that confusion is not likely between applicant’s mark and the cited marks since the products sold by the two companies will not be encountered by the same purchasers. More specifically, applicant explains that the goods sold under applicant’s mark will be sold only in children’s stores and only in the children’s section of larger brick-and-mortar and online retailers. The goods are targeted solely at children, and purchased solely by parents for their children. Applicant states that there is no other class of purchasers for its goods and there is no other stream of trade. To the contrary, applicant submits that the goods bearing the cited mark are sold mostly to avid bikers who are looking for a high performance bike and taking biking more seriously. In support of this statement, applicant submits extrinsic website evidence showing that registrant’s high performance bikes sell for above $349.00. In addition, applicant explains that its bikes, which are only made for and marketed to children, can be purchased for $69.00, as evidenced by the website evidence provided by applicant. Applicant argues that such a substantial difference between the price points of applicant’s and registrant’s products is a major indicator that the products will not travel in the same trade channels and will not be encountered by the same class of purchasers.

 

Examining Attorney’s Rebuttal

 

The examining attorney has carefully reviewed and considered applicant’s arguments against the finding that applicant’s goods are related to, and overlap with, registrant’s goods, and is not persuaded. In this case, both applicant’s goods and registrant’s goods feature identical goods in the nature of “Bicycles”. In addition, applicant’s goods listed as “Bicycles” in International Class 12 are broad enough to encompass registrant’s goods listed in part as “Mountain bicycles” in International Class 12. Moreover, the remainder of applicant’s goods feature structural parts, accessories and fittings for bicycles, tricycles and unicycles which are encountered by consumers in the same channels of trade as bicycles, tricycles and unicycles. Please see attached third-party website evidence from Priority Bicycles, Action Wheelsport, Sun Bicycles, Husky Bicycles and TREK, referenced supra.

 

 With respect to applicant’s argument that its goods are targeted solely at children, and purchased solely by parents for their children, whereas registrant’s goods are sold mostly to avid bikers who are looking for a high performance bike and taking biking more seriously, the examining attorney is not persuaded. First, the examining attorney points out that a determination of a likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  Second, the examining attorney points out that both registrant’s identification of goods and applicant’s identification of goods contain no limitations whatsoever as to the 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 presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods identified in the registration.  15 U.S.C. §1057(b).  In the absence of limitations as to channels of trade or classes of purchasers in the goods in the registration, the presumption is that the goods move in all trade channels normal for such goods and are available to all potential classes of ordinary consumers of such goods.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).

 

Therefore, confusion is likely, as consumers would believe that both applicant’s goods and registrant’s goods emanate from a single source. Accordingly, registration is refused under Trademark Act Section 2(d) and said refusal is hereby made FINAL.

 

Proper Response to Final Office Action – Partial Refusal

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final refusal(s) apply will be deleted from the application by Examiner’s Amendment: 

 

“Bicycles”; “Mini-bicycles; Scooters, namely, push scooters and motor scooters; Tricycles not being toys; Unicycles; Wagons”; “Structural parts and fittings for vehicles; Structural parts and fittings for bicycles, motorcycles, push scooters, motor scooters, tricycles not being toys, unicycles, wagons, go carts, all-terrain vehicles; Bicycle, motorcycle, push scooter, motor scooter, tricycle not being a toy, unicycle, wagon, go cart and all-terrain vehicle accessories, specially adapted for use therewith, namely, spokes, wheel hubs, stabilizers, wheels, seats, saddles, fitted seat covers, mudguards, horns, bells, pannier bags, side bags, saddle bags, luggage, luggage carriers, baskets, water bottle holders, drink holders, stands, mounted pet seats, racks for vehicles and fitted covers; Bicycle, motorcycle, tricycle not being a toy and unicycle wheel hubs; Bicycle, motorcycle, tricycle not being a toy and unicycle stabilizers; Bicycle, motorcycle, tricycle not being a toy and unicycle stands; Bicycle, motorcycle, tricycle not being a toy and unicycle frames; Bicycle, motorcycle, tricycle not being a toy and unicycle spokes; Bicycle and cycle wheels; Bicycle, motorcycle, tricycle not being a toy and unicycle seats; Bicycle, motorcycle, tricycle not being a toy and unicycle saddles; Fitted bicycle, motorcycle, tricycle not being a toy and unicycle seat covers; Bicycle, motorcycle, tricycle not being a toy and unicycle mudguards; Bicycle, motorcycle, tricycle not being a toy and unicycle horns; Bicycle and cycle bells; Pannier bags, side bags and saddle bags specially adapted for bicycles and cycles; Luggage carriers for bicycles and cycles; Pannier bags, side bags and saddle bags for motorcycles, tricycles not being toys, unicycles and bicycles; Baskets adapted for motorcycles, tricycles not being toys, unicycles and bicycles; Water bottle holders for bicycles, motorcycles, tricycles not being toys and unicycles; Tire pumps; Tire repair patches; Handle bars; Stands for bicycles, motorcycles, tricycles not being toys, unicycles and scooters; Bicycle, motorcycle, tricycle not being a toy, unicycle mounted pet seats; Strollers; Stroller hoods and covers”; “Bicycle, motorcycle, tricycle not being a toy and unicycle racks for vehicles”; “Vehicle seat protectors; Vehicle seat cushions” and “Child carrying trailers for use while exercising”.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods only: 

 

“Motorcycles; Go carts; All-Terrain vehicles; Pet strollers; Children’s car seats; Fitted car seat covers; Fitted fabric covers for vehicle seat belts; Safety seats for use in cars; Novelty license plate holders” in International Class 12. 

 

 

 

 

 

 

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).

 

 

/Brian P. Callaghan/

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4906

Email: brian.callaghan@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 January 03, 2020 for

U.S. Trademark Application Serial No. 88375836

 

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. 

 

 

/Brian P. Callaghan/

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4906

Email: brian.callaghan@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 January 03, 2020, 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.”