To: | Penn Fishing Tackle Mfg. Co. (officeactions@norvellip.com) |
Subject: | U.S. Trademark Application Serial No. 88398685 - ENGAGE - 13796-112 |
Sent: | February 22, 2020 02:29:34 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88398685
Mark: ENGAGE
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Correspondence Address:
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Applicant: Penn Fishing Tackle Mfg. Co.
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Reference/Docket No. 13796-112
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: February 22, 2020
On July 3, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88392559. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Comparison of the Marks
In the present case, applicant’s mark is the standard character mark ENGAGE, and registrant’s mark is the standard character mark ENGAGE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Applicant’s goods are “fishing reels; fishing rods” in Class 28. Registrant’s goods are Archery bows; Archery equipment, namely, archery bow grips in Class 28.
In this case, applicant’s goods are related to registrant’s goods because, as the attached Wikipedia article shows, “bowfishing” is a type of fishing performed with archery equipment, where the fishing rods and reels are affixed with arrows. See http://en.wikipedia.org/wiki/Bowfishing. Accordingly, archery equipment and fishing equipment are commonly made and sold by the same entity and sold in the same trade channels.
See:
The evidence shows that purchasers are accustomed to encountering the goods of the applicant and registrant offered under the same mark. Purchasers are likely to believe the goods emanate from the same source. Thus, applicant’s and registrant’s goods are 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
Because the marks are highly similar and the goods are closely related, there is a likelihood of purchaser confusion as to the source of the goods. Therefore, registration is refused under Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d).
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Marynelle W. Wilson/
Marynelle W. Wilson
Examining Attorney
Law Office 113
Phone: 571-272-7978
Email: marynelle.wilson@uspto.gov
RESPONSE GUIDANCE