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. 88398607
Mark: FROG
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Correspondence Address: |
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Applicant: Frog Scooters, Inc.
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Reference/Docket No. 526387.2
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: April 15, 2020
This Office action is in response to applicant’s communication filed on 02/28/2020.
Case Status:
Partial Trademark Act Section 2(d) Refusal: Likelihood of Confusion
NOTE: This refusal only applies to the goods and services listed herein.
New Refusal:
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Registrant applies the mark BULLFROG with a frog hand design inside of the “O”. Applicant seeks to register the wording FROG with a frog hand design inside of the “O”.
Comparison of the Services:
Registrant’s services are “Business advice and analysis of markets; Business consulting and information services; Business assistance, advisory and consulting services in the field of finance, real estate, and retail services; Management consulting and advisory services in the areas of corporate growth strategy, innovation and growth processes, organizational transformation, and talent management and development strategies.” Applicant’s services are, in pertinent part, “Advertising; Business management; Business administration; Clerical services.”
Here, the services are closely related because applicant’s broadly worded business services would encompass the business fields listed in the registration, namely, markets, finance, real estate, retail service, corporate growth strategy, innovation and growth processes, organizational transformation, and talent management and development strategies. Because applicant has not limited its services to a particular field, the services are legally equivalent and closely related. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Conclusion:
On balance, because the marks are highly similar and the services are closely related, consumer confusion is likely. Accordingly, registration is refused under Trademark Act Section 2(d).
Refusals Maintained and Continued:
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.
As to U.S. Registration Nos. 1312760, 2481506, 2554673, 2596739, 2781008, 3120953, 4464598, 4969834 and 4969835:
The registrant applies the following marks to the following services:
FROG for “Computer software design for others, namely, design of computer software stored on digital media; design services, namely, industrial design services; digital media design, namely, website design and analysis for others; graphic art design; and design for others in the field of engineering.”
FROG for “Business and marketing consulting services”
FROG for “MARKETING AND ADVERTISING SERVICES FOR OTHERS, NAMELY, BUSINESS MARKETING CONSULTING SERVICES REGARDING MARKETS TO BE TARGETED AND PRODUCTS TO BE DEVELOPED, PRODUCT AND PROJECT MANAGEMENT SERVICES”
FROG for “BUSINESS CONSULTATION, NAMELY, CORPORATE IDENTITY AND BRANDING STRATEGIES CONSULTATION; ONLINE DIRECTORY SERVICES, NAMELY, PROVIDING INDEXES AND WEBSITE LINKS TO OTHER CONTENT PROVIDERS FEATURING EDITORIALS AND ARTICLES IN THE FIELDS OF MARKETING AND ELECTRONIC COMMERCE” and “COMPUTER SOFTWARE DESIGN FOR OTHERS, NAMELY, DESIGN OF COMPUTER SOFTWARE STORED ON DIGITAL MEDIA; INDUSTRIAL DESIGN; GRAPHIC ART DESIGN; AND DESIGN FOR OTHERS IN THE FIELD OF ENGINEERING; COMPUTER SERVICES, NAMELY, DESIGNING AND IMPLEMENTING WEB SITES FOR OTHERS; COMPUTER SOFTWARE DESIGN FOR OTHERS FOR USE IN E-COMMERCE BUSINESS APPLICATIONS; COMPUTER SERVICES, NAMELY, PROVIDING CUSTOMIZED ONLINE WEB PAGES FEATURING USER-DEFINED INFORMATION, WHICH INCLUDE SEARCH ENGINES AND ONLINE WEB LINKS TO NEWS, WEATHER, SPORTS, CURRENT EVENTS AND REFERENCE MATERIALS, ALL IN A WIDE RANGE OF USER DEFINED FIELDS.”
FROG DESIGN for “Advertising and marketing services” and “Industrial design, engineering; graphic art design; computer design services, namely individual user interface design, design of computer software, web site design.”
FROG DESIGN for “advertising, business and marketing consulting services; business consultation, namely, corporate identity and branding strategies consultation; online directory services, namely, providing indexes and website links to other content providers featuring editorials and articles in the fields of marketing and electronic commerce; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, business organization, marketing and customer analysis; marketing services, namely, conducting consumer tracking behavior research and consumer trend analysis; marketing services, namely, consumer marketing research; business consultation and management regarding marketing activities and launching of new products” and “computer software and hardware design and engineering services; design and engineering consulting services in the fields of telecommunications and electronic products; computer software design services for others; computer software research and development services; industrial design services; new product research and design services; design and testing for new product development; design and testing of new products for others; engineering services; graphic design services; packaging design; interior design services; retail signage design; planning and layout design for the interior space of retail business establishments; website design services; digital media design services, namely, designing visual elements for online media and electronic devices.”
FROGLABS for “Business management consultation services; consultation services in the field of business organization and operation; business consultation regarding launching of new products and services; marketing advisory services; marketing services” and “Industrial design services; new product research and design services; design and testing for new product development; design and testing of new products for others; engineering services; engineering and engineering design services; website design services; design and development of computer hardware and software; visual design services in the nature of designing visual elements for on-line and other communication media.”
FROGVENTURES for “Business management consultation services; consultation services in the field of business organization and operation; business consultation regarding launching of new products and services; marketing advisory services; marketing services” and “Industrial design services; new product research and design services; design and testing for new product development; design and testing of new products for others; engineering services; engineering and engineering design services; website design services; design and development of computer hardware and software; visual design services in the nature of designing visual elements for on-line and other communication media.”
FROGDESIGN for “Engineering and Design Services.”
Applicant seeks to register the wording FROG plus design for, in pertinent part, “Advertising; Business management; Business administration; Clerical services” and “Developing of driver and operating system software; Software design and development; Design and development of software in the field of mobile applications; Providing online, non-downloadable software for micromobility; Software as a Service (SaaS) services, namely, providing non-downloadable software in the field of vehicle sharing and use of vehicles.”
In this case, the marks are highly similar because they all contain the wording “frog.” 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).
Indeed, the wording in the applied-for mark is identical to the wording in registrant’s “frog” marks. Moreover, the applied-for mark is highly similar to registrant’s “frog design,” “froglabs,” “frogventures,” and “frogdesign” marks because the applied-for wording is encompassed by these marks. 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.
The services are closely related as both parties offer advertising and business consultancy services as well as software design and software development services.
In the response to Office action, applicant argued that its services are in different fields and are marketed to different consumers through different trade channels. This argument is unpersuasive as neither the registrant nor the applicant has indicated any particular field or channels of trade for their advertising, business, software design or software development services. As the services of the parties have no restrictions as to 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 services are related.
As to U.S. Registration Nos. 4713059 and 5706088:
Registrant applies the marks “FROG” and “FROG BIKES” plus design to “Bicycles; tricycles not being toys; bicycle accessories, namely, bicycle stands, pannier racks adapted for bicycles, bicycle training handles, bicycle water bottle cages, bicycle stabilizers, bicycle horns, rubber bicycle cable covers, and bicycle bells; bicycle components, namely, axle bolts, disc brake piston stoppers, bicycle seat post clamps, rear derailleur protectors, handle bar stem riser adapters, brake levers and caliper, wheel nuts, handlebar grips, pedals, brake cable noodles, handle bars, saddles, tyres, wheels; bicycle bells; bicycle brakes; bicycle carriers for vehicles; bicycle chains; bicycle frames; bicycle handlebars; bicycle pumps; bicycle saddles, seats and mudguards; bicycle carrier racks; bicycle wheel rims; bicycle saddles; bicycle wheel spokes; bicycle stabilisers; bicycle stands; bicycle wheels; bicycle tyres and inner tubes for bicycle tyres; parts and fittings specially adapted for bicycles; handlebar grips for bicycles; bicycle water bottle holders; child carrying trailers for use in transporting children while bicycling and jogging; pannier bags for bicycles and seat bags specially adapted for bicycles” and “Bicycles, bicycle frames, bicycle components, namely, bicycle handlebars, bicycle saddles, bicycle cranks, bicycle stems, parts and fittings for bicycles, namely, handlebar grips, bicycle bottle holders.”
Applicant seeks to register “FROG” plus design for, in pertinent part, “Electrically powered land vehicles; Push scooters.”
Here, applicant’s mark is confusingly similar to registrant’s “FROG” mark because the wording is identical.
The applied-for mark is highly similar to registrant’s “FROG BIKES” mark because registrant has disclaimed the word “bikes,” rendering “frog” the dominant wording in the mark. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). As the wording in the applied-for mark is identical to the dominant wording in the registered mark, the marks are confusingly similar.
Thus, the goods are closely related.
On balance, because the marks are highly similar and the goods and services are closely related, consumer confusion is likely.
Accordingly, registration is refused under Trademark Act Section 2(d).
Partial Abandonment Advisory:
If applicant does not respond to this Office action within the six-month period for response, International Class(es) 012, 035 and 042 will be deleted from the application. The application will then proceed with International Class(es) 009 and 039 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
/Justine D. Parker/
Justine D. Parker
Examining Attorney
Law Office 101
571-272-2488
justine.parker@uspto.gov
RESPONSE GUIDANCE
