Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

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:  March 11, 2020

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INTRODUCTION TO NEW NON-FINAL ACTION

This Office action is in response to applicant’s communication filed on December 31, 2019.  This new non-final Office action is being issued to address these new requirements.  37 C.F.R. § 2.61(a); see TMEP §711.02.

In a previous Office action dated July 1, 2019, applicant was required to submit a definite identification of goods specifying the number of classes for which registration is sought and was required to remit fees for each class.  Applicant was advised that a search of the Office’s database of registered and pending marks was deferred until applicant complied with this requirement.  TMEP §704.02.

The requirements to provide a definite identification and classification of goods and to comply with the multiple class application requirements have been satisfied by applicant’s response.  See TMEP §§713.02, 714.04.  Accordingly, a search of the Office’s database of registered and pending marks has now been conducted, which has raised issues which must be resolved before the application may proceed.  This new non-final Office action is being issued to address these new refusals and/or requirements.  37 C.F.R. § 2.61(a); see TMEP §711.02.

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion – Partial Refusals as to Classes 021 and 025
• Prior Filed Application

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL REFUSALS AS TO CLASSES 021 AND 025

CLASS 021 REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5049258.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

CLASS 025 REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0612615, 1410589, 2356554, 2356555, 2554456, and 2844870.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

LEGAL STANDARDS FOR REFUSAL

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

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 goodsand differences in the marks.”); TMEP §1207.01. 

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); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

Applicant has applied to register:

• KODIAK (Standard Character) for, in relevant part, "Mugs, water bottles sold empty, vacuum bottles; kitchen utensils, namely, spatulas, strainers, turners, graters; kitchen containers; kitchen accessories, namely, kitchen mitts, non- electric kitchen grinders; lunch bags not of paper and insulated containers for kitchen and for food; non-electric portable coolers," in International Class 021, and “Clothing, namely, tops, bottoms, t-shirts, hoodies, scarves, gloves, socks, caps, hats, beanies; headwear, footwear,” in International Class 025. 

The registered marks are:

• KODIAK (Standard Character) for "Beverageware; Drinking glasses, namely, tumblers; mugs; cups; Thermal insulated containers for food or beverages; Heat-insulated containers for beverages," in International Class 021 (U.S. Reg. No. 5049258);

• KODIAK (Typed Drawing) for “Shoes,” in International Class 025 (U.S. Reg. No. 0612615);

• KODIAK (Typed Drawing) for “Boots and Shoes,” in International Class 025 (U.S. Reg. No. 1410589);

• KODIAK (Design Plus Words) for “belts, suspenders, boots, shoes, sandals, jackets, shorts, trousers, skirts, t-shirts, waders, vests, overalls, shirts, underwear, sweaters, raincoats, parkas, hats, jeans, coveralls, smocks, aprons, yokes, sweatshirts, turtlenecks, gloves and mittens for men, women and children; socks and hosiery for men, women and children,” in International Class 025 (U.S. Reg. No. 2356554);

• KODIAK (Design Plus Words) for “belts, suspenders, boots, shoes, sandals, jackets, shorts, trousers, skirts, t-shirts, waders, vests, overalls, shirts, underwear, sweaters, raincoats, parkas, hats, jeans, coveralls, smocks, aprons, yokes, sweatshirts, turtlenecks, gloves and mittens for men, women and children; socks and hosiery for men, women and children,” in International Class 025 (U.S. Reg. No. 2356555);

• KODIAK CANADA'S BOOT (Typed Drawing) for “Boots and Shoes,” in International Class 025 (U.S. Reg. No. 2554456);

• KODIAK (Typed Drawing) for “Clothing, namely, shirts, T-shirts, sweaters, blouses, skirts, tops, pants, jeans, shorts, vests, jackets, coats, parkas, overcoats, raincoats, tunics, slacks, camisoles, sweatshirts, sweatpants, turtle necks and underwear; headwear, namely, hats and caps; belts and suspenders; gloves and mittens; socks and hosiery; sandals,” in International Class 025 (U.S. Reg. No. 2844870);

U.S. Registration Nos. 0612615, 1410589, 2356554, 2356555, 2554456, and 2844870 are all owned by W-D Apparel Company, a Delaware Limited Liability Company.

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

In the present case, applicant’s mark is KODIAK and the registered marks U.S. Reg. Nos. 5049258, 0612615, 1410589, and 2844870 are KODIAK.  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).  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 and/or services.  Id.  Therefore, these marks are confusingly similar.

The wording in U.S. Reg. Nos. 2356554 and 2356555, KODIAK, is similarly identical to the wording in the applied-for mark.  While these marks also contain a design element, the addition of the design fails to change the meaning or commercial impression of the identical wording therein, and in fact, as the design appears to be a Kodiak bear, would further reinforce the similarities between the marks as opposed to distinguishing the source of the services.  Thus, these marks are also confusingly similar.

Finally, as to the mark in U.S. Reg. No. 2554456, the wording is identical in part. 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, like the disclaimed wording CANADA’S BOOT in the registered mark, 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).  The mere deletion of non-distinctive wording from the registered mark, when used in conjunction with identical or highly related goods, would fail to distinguish the source of the goods, rendering the marks 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)).  

With respect to the applied-for Class 025 goods and the goods in U.S. Reg. Nos. 0612615, 1410589, 2356554, 2356555, 2554456, and 2844870, the application uses broad wording to describe tops, bottoms, footwear, and headwear, which presumably encompasses all goods of the type described, including registrant’s more narrow goods.  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).  In addition, a number of listed goods are identical.   Thus, applicant’s and registrant’s goods are legally identical.  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)).

With respect to the applied-for Class 021 goods and the goods as identified in U.S. Reg. No. 5049258, the registration uses broad wording to describe “beverageware,” “thermal insulated containers for food or beverages,” and “Heat-insulated containers for beverages,” which presumably encompasses all goods of the type described, including registrant’s more narrow goods including “Mugs, water bottles sold empty, vacuum bottles; kitchen containers; lunch bags not of paper and insulated containers for kitchen and for food; non-electric portable coolers.”  Thus, applicant’s and registrant’s goods are legally identical.

The goods 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 goods are related.

In this case, applicant's and registrants’ marks are identical or identical in part, yielding confusingly similar marks in terms of sound, appearance and commercial impression.  The confusingly similar marks, when used in conjunction with legally identical goods, combines to create a substantial likelihood that consumers will be confused as to the source of the goods.  Therefore, registration is refused as to Classes 021 and 025 under Section 2(d) of the Trademark Act. 

PRIOR FILED APPLICATION

The filing date of pending U.S. Application Serial No. 88175572 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues as to the mark in U.S. Application Serial No. 88175572.

RESPONSE GUIDELINES

How to respond.  Click to file a response to this nonfinal Office action.    

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 March 11, 2020 for

U.S. Trademark Application Serial No. 88407044

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. 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 March 11, 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.”