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:  April 20, 2020

INTRODUCTION

This office Action is in response to Applicant’s communication, filed January 2, 2020.

 

In the previous office Action, the examining attorney refused registration of the applied-for mark under Section 2(d) of the Trademark Act, for a likelihood of confusion with a registered mark.

 

Applicant’s arguments against the refusal have been considered, and found unpersuasive. Thus, 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. 5114087.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5114087.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  (Registration attached previously.) The owner of the registered mark is Sportsgear Outdoor Products LLC, a limited liability company organized under the laws of Kansas.

Summary of Section 2(d)

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260.

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.

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002).

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.

Comparison of the Marks

The literal elements of the marks are highly similar, and thus the marks are similar in sound, appearance, and commercial impression

 

Applicant’s mark is “CHRONOS” in standard characters, for: “Portable photography equipment, namely, lenses, lens filters, mounts, mouth mounts, straps, protective cases, floatation devices, reflectors, tripods, light stands and supports and bags specially adapted for these goods; Drone accessories, namely, carrying cases, replacement batteries, replacement blades, charging cables, camera covers, drone camera accessories including lenses and lens filters, lanyards, helipads, controllers and sunshades”

 

Registrant’s mark is “CRONUS” in standard characters, for: “Cameras,” amongst others.

 

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

The two marks are highly similar in sound. While the spelling of the two marks is not identical, it results is only a slight variation in their sound. Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

Finally the commercial impression of the two marks is similar, as they both identify ancient Greece. (see evidence attached to Office Action, issued July 2, 2019, pp. 4-12) It is of note that these two gods in particular are considered to be similar enough phonetically that references to the god Chronos clarify that they are not discussing the god Cronus. (Id., “Not to be confused with Cronus, the Titan father of Zeus” on Wikipedia.com, “Kronos was essentially the same as Khronos (Chronos), the primordial god of time in the Orphic Theogonies” from www.theoi.com, “The name Chronos appears on occasion, but he is not seldom identified with Cronos, who once ruled the universe” from www.maicar.com”) As the two marks at issue are so similar in sound and appearance, and both draw from the same well of Greek mythology, they also share a highly similar commercial impression.

 

Comparison of the Goods

There is a likelihood of confusion when the goods and services are related

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).

 

Determining likelihood of confusion is based on the description of the goods and/or services 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)).  

 

The evidence attached to the previous office Action, supplanted in this Action by the examining attorney, consists of retailers of cameras, camera accessories, drones, drone accessories, and cameras specially adapted for use with drones. This evidence establishes both 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.  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).

 

 

Applicant’s arguments against the refusal, and the examining attorney’s rebuttal.

 

The marks are highly similar in sound.

Applicant argues that its mark “CHRONOS” is not identical in sound to the mark “CRONUS.” While the marks may not be identical in sound, the distinction between them is slight. Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

The marks are similar in commercial impression

Applicant contends that the marks are distinct in their commercial impression because they refer to two different gods from the Ancient Greek pantheon. The very fact that the sole distinction between the commercial impressions of the marks is of which god of Ancient Greece they identify is evidence that the marks share a highly similar commercial impression.

 

“Cameras” are related to “Portable photography equipment,” and “Drone accessories, namely…camera covers, camera accessories”

The 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)).  

 

Applicant argues that the goods sold under its mark and those of the Registrant are unlikely to cause consumer confusion because they are sold and marketed to different classes of consumers. This argument is unpersuasive for two reasons. First, Applicant’s argument relies on extrinsic evidence of actual use. Second, neither mark has a description of its goods that contains restrictions as to the nature, type, channels of trade, or classes of purchasers.

 

Applicant concludes that its goods are unrelated to “Cameras” on the basis of belief alone. (“Obviously, a customer purchasing all goods other than cameras…is entirely different with no overlap.” Applicant’s Response to the Office Action, filed Jan. 2., 2020, p.3) This argument is unpersuasive not only because the evidence of record strongly supports a finding that cameras are related to photography equipment and camera accessories, (see Office Action issued July 2, 2019, pp.13-52) but also because the examining attorney did not argue that the other goods of the Registrant were likely to cause consumer confusion. The registered mark identifies “cameras” amongst the goods offered in connection with its mark, “CRONUS.” By attempting to read in goods not cited in the refusal, Applicant appears to be conceding that its goods are in fact related to cameras.

 

Applicant also argues that the consumers of the goods offered in connection with its mark are distinct from those of the Registrant’s. This argument is similarly unpersuasive, as the description of the goods in both marks do not contain any restrictive language that would support Applicant’s argument. Where the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers they 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)).  Without such restrictive language, the goods of both marks are presumed to travel in the same channels of trade, to the same class of purchasers. The evidence attached to the previous office Action and this Final Action strongly supports a finding that cameras, camera accessories, and drone cameras travel within the same channels of trade.

 

CRONUS is not a dilute term for cameras or camera equipment and accessories for cameras

Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “CHRONOS,” “CRONUS,” “CHRONUS,” and “CRONOS,”  to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations appear to be for goods predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).

 

Evidence comprising third-party registrations for similar marks with different or unrelated goods, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording “CRONUS” is weak or diluted.

 

 Specifically, the third-party registrations cited by the Applicant are:

 

1. Dr. CHRONO and DRCHRONO for “Downloadable software…for use in providing information to healthcare providers.”
2. KRONOS for “computer software…for the integration of graphics parallel computing, vision processing
3. KRONOS UNLEASHED for “computer software for playing games of chance”
4. KRONOS for “fiber laser for non-medical purposes”
5. “CHRONOS” for “computer hardware”
6. “CHRONO DIAMOND for “horological and chronometric instruments featuring diamonds”
7. “CRONUS” for: “computer security software”
8. “KRONOS TOUCH ID” for: “security data entry terminal”
9. “CHRONO TRIGGER” for: “computer programs in the nature of interactive action adventure stories”

 

See, Applicant’s Response to the Office Action, filed Jan. 2., 2020, pp 4-5

 

Buyers of electronics are not de facto sophisticated purchasers, and neither the registration nor application restrict their consumers to professional fields

Applicant states that “the buyer of electronics is sophisticated.” (See, Applicant’s Response to the Office Action, filed Jan. 2., 2020, p. 3) These purchasers, Applicant contends, typically perform extensive research prior to purchasing, which would weigh against a finding of a likelihood of confusion. This argument is unpersuasive in the face of the preponderance of the similarities between these two marks and the close relationship between their goods. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

Even if consumers of the compared goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

 

Refusal

Applicant’s mark and the registered mark are highly similar in sound, appearance, and commercial impression, and are for related goods; As such, a consumer is likely to arrive at the mistaken conclusion that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.

 

RESPONDING TO THIS FINAL ACTION

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

If the applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

/Aaron Rosenthal/

Examining Attorney

Law Office 120

Telephone: 571-272-4625

Email: Aaron.Rosenthal@USPTO.gov

 

 

 

 

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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 April 20, 2020 for

U.S. Trademark Application Serial No. 88396219

 

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. 

 

 

Rosenthal, Aaron

 

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 April 20, 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.”