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. 88381228
Mark: BYRON
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Correspondence Address:
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Applicant: DELTA FAUCET COMPANY
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Reference/Docket No. 115-5683-T
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 is in response to applicant’s communication filed on December 17, 2019.
In a previous Office action 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.
Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal 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:
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Refusal to register is hereby made FINAL because of a likelihood of confusion with the marks in U.S. Registration Nos. 0660325 and 0378463. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations. The cited registrations share the same owner.
Applicant’s mark is BYRON in standard character form for “plumbing products, namely, bathtubs” in International Class 11.
Registrant’s marks are BYRON JACKSON in standard character form for “electric motors and parts therefor” and “pumps and parts thereof” in International Class 7.
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. 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods, and similarity of trade channels of the goods. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
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).
In the Response dated December 17, 2019, the applicant conceding that “the marks are only similar in total appearance.”
Here, the respective marks share the common wording BYRON, which appears highly similarly in appearance, and identically in sound and connotation. Applicant has merely removed the surname JACKSON from the registrant’s marks, and could be entirely incorporated within the registered marks. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
Applicant’s goods are “plumbing products, namely, bathtubs” in International Class 11.
Registrant’s goods are “electric motors and parts therefor” and “pumps and parts thereof” in International Class 7.
The goods 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).
Applicant disputes the relatedness of the goods. Specifically, applicant argues that a consumer is unlikely to shop for the goods in question in similar trade channels and that bathtubs have no relationship to industrial products such as pumps and electric motors.
However, in the original Office action the Trademark Examining Attorney provided evidence from American Standard, Kohler, and Ferguson establishing that the same entity commonly provides the relevant goods and markets the goods under the same mark. This evidence showed each of the aforementioned companies marketing bathtubs, motors, and pumps under the marks American Standard, Kohler, and Ferguson. Applicant’s Response did not rebut the validity of this evidence. The examining attorney now provides a sample of third party registrations augmenting the relatedness of the goods which was established in the original Office action.
Further, additional marketplace evidence newly attached supports the assertion that at a minimum the goods in question are of complementary use. Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). Accordingly, the attached evidence from Hydro Thermix, Pool Spa Supplies, Nexxus, Lyons, and SpaGuts.com directly rebuts applicant’s arguments that pumps and motors are for industrial use only, and have no relationship to “bathtubs.”
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Accordingly the 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).
Conclusion
In this case, the respective marks feature highly similar shared wording. Registration must be refused because applicants are not permitted to remove wording from registered marks for related goods because the Trademark Act and accompanying case law does not support this establishing a separate and distinct commercial impression. Moreover, the goods at issue are related based on the marketplace evidence and third party registrations provided. Therefore, a consumer familiar with registrant’s mark BYRON JACKSON, used on pumps and electric motors, upon encountering the mark BYRON on bathtubs, would be likely to mistakenly believe that the goods emanate from a common source.
In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.
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).
/Joseph P. McCarthy/
Trademark Examining Attorney
Law Office 127
Phone: (571) 272-0458
joseph.mccarthy@uspto.gov
RESPONSE GUIDANCE
