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 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:  December 18, 2019

 

 

This Office action is in response to applicant’s communication filed on November 27, 2019.

 

In a previous Office action dated June 6, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was notified of a potential Section 2(d) refusal based on a pending application.  Further, applicant was required to satisfy the following requirement(s): submit an English translation of foreign wording in the mark.

 

The Section 2(d) advisory regarding Application Serial No. 88262011 has been withdrawn because the application has been abandoned.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney has considered the applicant’s arguments against the Section 2(d) refusal and the translation requirement, and has found them unpersuasive.  Therefore, for the reasons set forth below, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b); TMEP §714.04.  All Arguments and Evidence from the June 6, 2019 Office Action (the “previous Office Action”) are incorporated herein by reference.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

• English Translation Required

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark was refused, and the refusal is herein maintained and made FINAL, because of a likelihood of confusion with the mark in U.S. Registration No. 5590074.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See registration attached to the previous Office Action.

 

Applicant’s applied-for mark is EXOCET in standard characters for “Pocket knives.”

 

Registrant’s mark is EXOCETT in standard characters for “FLY FISHING RODS.”

 

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.

 

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)); TMEP §1207.01(b).

 

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).

 

In this case, applicant’s applied-for mark, EXOCET, is virtually identical in appearance to registrant’s mark, EXOCETT.  This similarity creates a substantially similar overall commercial impression in the compared marks.

 

Further, the marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Moreover, potential purchasers could reasonably assume, due to the overall similarities in appearance, sound, connotation and commercial impression in the respective marks, that applicant's goods provided under the EXOCET mark constitute a new or additional line of products from the same source as the goods provided under the previous EXOCETT mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark.  See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).

 

Applicant argues that, “The present Office Action correctly notes that the applied-for mark EXOCET and the registered mark EXOCETT look and sound alike; however, the two marks are not identical.  To the contrary, the cited registration includes an additional T that is not present in the applied-for mark.  This distinctive difference between the two marks is readily apparent to even the most casual consumer, reducing any potential likelihood of confusion between the two marks.”  This argument is not persuasive.  There is no requirement that in order for a likelihood of confusion to exist, the compared marks must be identical.

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).  Here, the compared marks are sufficiently similar in terms of their overall commercial impression, and are also substantially similar in appearance and sound, that consumers who encounter the marks are likely to assume a connection between the parties.  

 

Based on the foregoing, the applicant’s applied-for mark and registrant’s mark are sufficiently similar to find a likelihood of confusion.

 

Comparison 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).

 

Here, applicant’s “Pocket knives” are related to registrant’s “FLY FISHING RODS” because it is common for the same entity to produce and sell pocket knives as well as fly fishing rods.  Therefore, consumers encountering applicant’s applied-for mark and registrant’s mark used in connection with the respective goods are likely to believe that the goods emanate from the same source.

 

The Internet evidence attached to the previous Office Action, consisting of web pages from the websites of Cabela’s, Bass Pro Shops, and LL.Bean, shows that these entities all produce and sell pocket knives as well as fly fishing rods. 

 

In addition, the trademark examining attorney has attached hereto additional Internet evidence showing the relatedness of applicant’s and registrant’s goods.  Specifically, the attached evidence from the website of Orvis shows that it produces and sells pocket knives as well as fly fishing rods.  The attached evidence from the websites of Berkley, Eagle Claw, Field & Stream, and Whisker Seeker shows that these entities all produce and sell fixed blade knives as well as fishing rods.  The attached evidence from the websites of 2 Rivers, Field & Stream, Sierra, Sportsman, Tackle Direct, and West Marine shows that these entities all sell pocket knives, or folding knives, as well as fly fishing rods.

 

The Internet evidence of record establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, 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.  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).

 

To the extent the evidence may not address the exact nature of applicant’s goods, applicant should note that relatedness does not have to be established for every good or service in an identification.  It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).  In this case, relatedness has been established for pocket knives and fly fishing rods, as well as fishing rods and fixed blade knives, which is enough to show a likelihood of confusion.

 

Based on the evidence of record and the analysis above, applicant’s goods and registrant’s goods are sufficiently related that they could give rise to the mistaken belief that the goods emanate from the same source.

 

Applicant argues that, “the suggestion that pocket knives are related to fly fishing rods simply because they are both sold by the same retailers is not well-supported” and “there is no basis to conclude that consumers seeking to purchase pocket knives overlap in any way with consumers seeking to purchase flying fish rods.”  However, applicant’s and registrant’s goods are likely to be encountered by the same class(es) of consumers or used by the same persons, namely, those going fishing, hunting or camping.  As a result, these goods are likely to be available in the same store aisle or in the same section of an online retailer’s website.

 

Moreover, the evidence of record in this case establishes that the compared goods are of a kind that may emanate from a single source under a single mark, and that the relevant goods are provided through the same trade channels and used by the same classes of consumers in the same field of use.  Therefore, 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).  Hence, consumers encountering applicant’s applied-for mark and registrant’s similar mark used in connection with the respective goods are likely to be confused as to the source of the respective goods.

 

Further, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.  Based on the evidence of record and the analysis above, applicant’s and registrant’s goods are sufficiently related that they could give rise to the mistaken belief that the goods emanate from the same source.

 

Applicant should note that where the marks of the respective parties are virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or 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).  Here, the compared goods are also highly related.

 

In conclusion, applicant should also note that the overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).

 

Because applicant’s and registrant’s marks are similar and the goods are related, there is a likelihood of confusion as to the source of the parties’ goods.  Therefore, the refusal under Section 2(d) of the Trademark Act is hereby maintained and made Final.  15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

English Translation Required

 

To permit proper examination of the application, applicant must submit an English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “EXOCET” is “flying fish”.  TMEP §809.03.  See translation evidence attached to the previous Office Action.

 

Applicant’s response contains the following statement: “Applicant understands that “exocet” means “flying fish” in French.”  However, applicant argues that its “selection of the mark EXOCET is purely fanciful and arbitrary, and Applicant is not aware of any significance or relationship between Applicant’s pocket knives and the French translation of this word.”  For the following reason(s), this argument is not persuasive.

 

Trademark Rule 2.32(a)(9) and TMEP §809 require applications for marks including non-English wording to include an English translation of that wording.  Additionally, under Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), “[t]he Office may require the applicant to furnish such information … as may be reasonably necessary to the proper examination of the application.” 

 

The translation evidence attached to the previous Office Action shows that the English translation of “exocet” is “flying fish”.  Applicant has provided no evidence that “exocet” has any meaning other than “flying fish”.  While some of the translation evidence shows that Exocet is also a trademark for a French-built anti-ship missile, this evidence equally recognizes that the trademark originates from the French word for “flying fish.” 

 

In addition, the Internet evidence attached hereto provides further support for this translation.  For instance, Wikipedia states, “The Exocet (French pronunciation: ​[ɛɡzɔsɛ]; French for "flying fish"[1]) is a French-built anti-ship missile whose various versions can be launched from surface vessels, submarines, helicopters and fixed-wing aircraft” [Emphasis added].  The Collins dictionary recognizes the trademark significance of the word Exocet and gives the word origin as “from French, from New Latin Exocoetus volitans flying fish.”  Similarly, Lexico also recognizes the trademark significance of the word and gives the word origin as “1970s from French, literally ‘flying fish’, via Latin from Greek ekōkoitos ‘fish that comes up on the beach’ (literally ‘out of bed’).”  

 

Moreover, it is noteworthy that, as shown in the attached evidence from the USPTO’s X-Search database, the French trademark referenced above appears to be registered in the U.S. as Registration No. 4604232 (EXOCET), with a statement that “The English translation of "EXOCET" in the mark is "FLYING FISH".”

 

Based on the translation evidence of record, the English translation of “EXOCET” is “flying fish”.  Even if applicant did coin its mark without intending it to have the meaning of “flying fish,” the question is not what applicant intended, but how the mark will be perceived.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.4 (TTAB 2015).

 

Therefore, the requirement for an English translation of foreign wording in the mark is hereby maintained and made Final.

 

Response Options for Final Office Action

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

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).

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 December 18, 2019 for

U.S. Trademark Application Serial No. 88407965

 

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. 

 

 

/Leslie Ann Thomas-Riggs/

Leslie Ann Thomas-Riggs

Trademark Examining Attorney

USPTO, Law Office 125

(571) 272-5469

leslie.thomas-riggs@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 December 18, 2019, 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.”