To: | EarthQuaker Devices, LLC (louis.wagner@fisherbroyles.com) |
Subject: | U.S. Trademark Application Serial No. 88404252 - ARROWS - 08139.T027US |
Sent: | October 16, 2019 02:17:05 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88404252
Mark: ARROWS
|
|
Correspondence Address: |
|
Applicant: EarthQuaker Devices, LLC
|
|
Reference/Docket No. 08139.T027US
Correspondence Email Address: |
|
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: October 16, 2019
This Office action is in response to Applicant’s communication filed on August 7, 2019.
In a previous Office action dated June 29, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:
Upon review of Applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of the issue below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF THE ISSUE MADE FINAL THAT APPLICANT MUST ADDRESS:
SECTION 2(d) LIKELIHOOD OF CONFUSION – REFUSAL
Applicant seeks registration of the mark ARROWS. Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5628821. 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 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. 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 and differences in the marks.”); TMEP §1207.01.
Applicant seeks registration of the mark ARROWS for “Electronic effects pedals for simultaneous use with musical instruments” in International Class 009, as acceptably amended.
The registered mark is ARROW for “Computer hardware, namely, an electronic device for audio emulation for audio or music recording; Computer hardware, namely, an electronic device for audio manipulation for audio or music recording; Computer hardware, namely, an electronic device for audio processing for audio or music recording; Computer peripherals, namely, an electronic device for audio or music recording; Audio processing equipment, namely, audio equalizers for audio or music recording; Computer hardware for producing audio effects, namely, an electronic device for producing audio reverbs, audio delay, audio room emulations and audio tape emulations for audio or music recording; Computer hardware, namely, an electronic device for use in manipulating digital audio information for audio or music recording; Audio consoles, namely, an electronic device sound mixers for audio or music recording; Computer hardware, namely, audio interfaces for audio or music recording; Microphone preamplifiers for audio or music recording; Computer hardware, namely, an electronic device for use in generating audio tape emulations for audio or music recording; Computer hardware, namely, an electronic device for producing audio reverbs, audio delay, and audio room emulations for audio or music recording; all of the foregoing being complete end-user devices excluding the electronic components thereof” in International Class 009.
Similarity of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, Applicant’s ARROWS mark is confusingly similar to Registrant’s ARROW mark in terms of appearance, sound, and commercial impression. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark). Therefore, the marks are confusingly similar.
In response, Applicant does not argue against the similarity of the marks. In fact, Applicant agrees that the marks are confusingly similar.
Relatedness 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] 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).
Determining 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)).
In this case, the goods of the parties have no restrictions as to 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)).
Additionally, according to the evidence of record, an effects unit or effects pedal is an electronic or digital device that alters the sound of a musical instrument, producing effects such as distortion or overdrive and time effects, such as reverb and delay. See the previously-attached evidence from http://en.wikipedia.org/wiki/Effects_unit. Thus, the registration uses broad wording to describe its various electronic devices for audio manipulation, audio emulation, and for producing audio effects, which presumably encompasses all goods of the type described, including Applicant’s more narrowly-defined “electronic effects pedals for use with musical instruments.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
Further, Applicant’s goods are related to Registrant’s goods, as demonstrated by the attached evidence. The attached Internet evidence, consisting of screenshots of the webpages of entities similar to Applicant and Registrant, establishes that the same entity commonly produces the relevant goods, namely, electronic effects pedals and various computer audio equipment, 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. See the newly-attached evidence from:
- Boss: http://www.boss.info/us/categories/featured_products/
- Roland: http://www.roland.com/us/
- CAL Creation Audio Labs: http://www.creationaudiolabs.com/
- AMS: http://www.americanmusical.com/
- Head Rush: http://www.headrushfx.com/
- Line 6: http://line6.com/helix/index.html
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).
In response, Applicant unpersuasively argues against the relatedness of the goods.
First, Applicant’s arguments against the likelihood of confusion refusal are based on inadmissible evidence. Specifically, Applicant’s internet materials have not been properly made of record and are objected to. Although Applicant has discussed the contents of webpages as evidence against the refusal, Applicant did not provide the date the evidence was accessed nor the actual URL address of the webpage, which is not sufficient to introduce the underlying webpages into the record. In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013); In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012)); TBMP §1208.03; TMEP §710.01(b). To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage. See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b). Accordingly, the underlying webpages links will not be considered.
Second, Applicant should note that generally, the greater degree of similarity between the applied-for mark and the registered mark, as is the case here, 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). Here, the marks are nearly identical; thus, the goods of the parties need not be highly related.
Third, Applicant’s argument that the purchasers of the parties’ goods are sophisticated such that confusion is not likely is unpersuasive. 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). Accordingly, Applicant’s argument that the purchasers of the parties’ goods are so sophisticated in the field of musical instruments and effects pedals does not mean that they are sophisticated in the field of trademarks or immune from source confusion.
Lastly, as Applicant itself recognizes, actual confusion is not necessary to show that there is a likelihood of confusion. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). Thus, Applicant’s discussion of this factor does not carry any weight in this analysis.
Conclusion
In summary, because Applicant's and Registrant's marks are similar and because the goods are related, Applicant's mark must be refused registration pursuant to Section 2(d) of the Lanham Act.
Although Applicant's mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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 response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Xheneta Ademi/
Xheneta Ademi
Examining Attorney
Law Office 122
571-272-7151
xheneta.ademi@uspto.gov
RESPONSE GUIDANCE