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 PARTIALLY 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 28, 2020

INTRODUCTION

This Office action is in response to applicant’s communication filed on January 2, 2020.

In a previous Office action dated July 2, 2019, the following issues were raised:

·       Refusal under Trademark Act Section 2(d) - Likelihood of Confusion ·

·       Advisory regarding Prior-Filed Application

·       Requirement for Information - Descriptiveness Issue

Based on applicant’s response filed on January 2, 2020 and the Examiner’s Amendment issued on January 22, 2020, the following issues have been withdrawn, obviated and/or satisfied:

·       Refusal under Trademark Act Section 2(d) - Likelihood of Confusion with U.S. Registration Nos. 5130772 and 5573968

·       Advisory regarding Prior-Filed Application

·       Requirement for Information - Descriptiveness Issue

See TMEP §§713.02, 714.04. 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

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:

·       Partial Refusal under Trademark Act Section 2(d) as to Class 037 - Likelihood of Confusion with U.S. Registration No. 5220129

·       Partial Abandonment Advisory

PARTIAL REFUSAL UNDER TRADEMARK ACT SECTION 2(d) AS TO CLASS 037 - LIKELIHOOD OF CONFUSION WITH U.S. REGISTRATION NO. 5220129

THIS PARTIAL REFUSAL APPLIES TO CLASS 037 ONLY

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. 5220129.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

Registration of the applied-for mark is partially refused as to Class 037 because of a likelihood of confusion with the mark in U.S. Registration No. 5220129.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration, a copy of which was attached to the previous Office action.

The applied-for mark is BULLETPROOF in standard characters for the following services, in part:

·       Class 037:  Automotive upgrade services, namely, supercharging, turbocharging and performance upgrades of automobiles; Car washing; Automobile cleaning and car washing; all of the foregoing services excluding repair, maintenance, and installation of diesel engines and their component parts

The registered mark is BULLET PROOF in standard characters for the following services:

·       Class 037:  Automotive repair and maintenance services, namely, repair and maintenance of diesel engines, and repair and installation of diesel engine components

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 and/or services 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 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.

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 this case, the compared marks are identical except for a slight difference in appearance between applicant’s mark, which appears as a compound word with no space separating the words, that is, BULLETPROOF; and registrant’s mark, which appears as two words with a space separating the words, that is, BULLET PROOF.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

Accordingly, for the reasons stated above, the applicant’s mark is confusingly similar to the registered mark.

Relatedness of the Services

The goods and/or services 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).

The compared goods and/or services 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 and/or services] 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).

The evidence attached to the previous Office action, and the attached Internet evidence, consisting of excerpts from APR1 Automotive Performance & Repair, RRT Automotive, AR Auto Service, Rackley’s Performance & Auto, Art’s Automotive Service Center, Diesel USA Group, Spiffy, 5 Star Auto Spa, Five Star Auto Center, and Downey Hand Car Wash & Detail Center, show that the same entity commonly provides automotive performance services and automotive repair services, and car washing services and automotive maintenance services, and markets the services under the same mark through the same trade channels.  Thus, applicant’s and registrant’s services 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).

The examining attorney has also attached several sample registrations from the Office’s database of registered marks showing automotive performance services and automotive repair services, and car washing services and automotive maintenance services, are commonly provided under the same mark.  See attached U.S. Registration Nos. 3900611, 4021982, 4037699, 4410517, 4642005, 5011816, 5159217, 5274025, 5358873, 5373017, 5553066, 5573623, 5708474, 5774275, 5792530, 5806540, 5826887, 5914530, 5918067, and 5934115; and U.S. Registration Nos. 4921920, 5005977, 5090656, 5096783, 5115762, 5127440, 5136282, 5309175, 5323299, 5339309, 5476971, 5477188, 5573189, 5549381, 5643895, 5689229, 5734308, 5741944, 5833610, and 5942714.  This evidence shows that the services are related.

Moreover, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

The overriding concern is not only to prevent buyer confusion as to the source of the services, 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 re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

Response to Applicant’s Arguments

Applicant argues that its services are different from the registrant’s services.  Indeed, applicant has amended its services to exclude the repair, maintenance, and installation of diesel engines and their component parts.  However, as discussed above, this argument is not persuasive because the compared services need not be identical or even competitive to find a likelihood of confusion; they need only be related.  As discussed above, applicant’s and registrant’s services are related because the evidence shows that the relevant services commonly emanate from the same source.

Conclusion

The applicant’s mark is confusingly similar to the registrant’s mark because they share identical or nearly identical wording and create a highly similar commercial impression.  In addition, the applicant’s services are closely related to the registrant’s services.  Further, applicant’s arguments have been considered and found unpersuasive.  In view of the foregoing and the reasons stated above, the refusal to register under Trademark Act Section 2(d) in Class 037 is continued and made final.

PARTIAL ABANDONMENT ADVISORY

If applicant does not timely respond within six months of the issue date of this final Office action, the following class to which the final refusal applies will be deleted from the application by Examiner’s Amendment:

·       Class 037:  Automotive upgrade services, namely, supercharging, turbocharging and performance upgrades of automobiles; Car washing; Automobile cleaning and car washing; all of the foregoing services excluding repair, maintenance, and installation of diesel engines and their component parts.

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

In such case, the application will proceed for the following class only:

·       Class 012:  Automotive body kits comprising external structural parts of automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles; all of the foregoing goods excluding vehicle diesel engines and their component parts, vehicle engine mounts and their component parts, and vehicle steering and suspension systems and their component parts.

RESPONSE OPTIONS TO FINAL OFFICE ACTION

Applicant must respond within six months of the date of issuance of this final Office action or the application will be PARTIALLY abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

ASSISTANCE

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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).

/Julie H. Choe/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 126

(571) 270-3368

julie.choe@uspto.gov

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 January 28, 2020 for

U.S. Trademark Application Serial No. 88406429

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. 

/Julie H. Choe/

Trademark Examining Attorney

United States Patent and Trademark Office

Law Office 126

(571) 270-3368

julie.choe@uspto.gov

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 January 28, 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.”