| To: | Time House Trading LLC (nwells@legendslaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88409541 - ECSTACY - 5236.17 |
| Sent: | January 16, 2020 06:00:11 PM |
| Sent As: | ecom121@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88409541
Mark: ECSTACY
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Correspondence Address:
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Applicant: Time House Trading LLC
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Reference/Docket No. 5236.17
Correspondence Email Address: |
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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: January 16, 2020
INTRODUCTION
This Office action is in response to applicant’s communication filed on January 8, 2020.
In a previous Office action(s) dated July 12, 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 registered marks. In addition, applicant was required to satisfy the following requirement: amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
In addition, the following refusal has been withdrawn: Section 2(d) refusal as to the mark in U.S. Registration No. 4392518 only. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is “ECSTACY”, for use with, as amended:
Class 14: Precious metals and their alloys and; goods in precious metals or coated therewith, namely, watches, timepieces, jewelry cases, bracelets; jewellery, precious stones; horological and chronometric instruments
The registered mark is “SPIRIT OF ECSTASY”, for use with, in relevant part:
Class 14: Precious stones, pearls and precious metals, and imitations thereof; jewellery; time instruments, namely, watches and clocks; other goods made of precious stones and precious metals, namely statues and figurines, made of or coated with precious or semi-precious metals or stones, works of art made of precious metals; key rings and key chains, and charms therefor; jewellery boxes and watch boxes, namely presentation boxes for jewellery and watches
As discussed in the July 12, 2019 Office action, 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 [or services] and 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.
Comparison of the Marks
In its January 8, 2020 response, applicant argues that the marks are dissimilar and thus not likely to be confused because registrant's mark contains the additional wording “SPIRIT OF” which is not featured in the applicant's mark. Further, applicant argues that it would not be reasonable to presume that the registrant's mark would be presented in the same manner of stylization as the applicant's mark. See applicant's response at Page 3. The trademark examining attorney respectfully disagrees.
The evidence attached to the current Office action from Lexico shows that the word “spirit” in the registrant's mark means “those qualities regarded as forming the definitive or typical elements in the character of a person, nation, or group or in the thought and attitudes of a particular period.” Additionally, the evidence attached to the first Office action from Lexico shows that the word “ecstasy” means “an overwhelming feeling of great happiness or joyful excitement.”
Registrant's mark, then, creates the commercial impression of something that embodies the definitive elements of great happiness or joyful excitement. The applicant's mark similarly creates the commercial impression of an overwhelming feeling of great happiness or joyful excitement. Note that applicant's mark does not contain any additional wording to alter the commercial impression of the mark and distinguish its commercial impression from the commercial impression of the registered mark. Thus, applicant's and the registrant's marks create an overall similar commercial impression, namely, that of an overwhelming feeling of great happiness or joyful excitement.
While applicant argues that it would not be reasonable to presume that the registrant's mark would be presented in the same manner of stylization as the applicant's mark, the trademark examining attorney finds that is argument is unsupported. Specifically, it is well-settled that mark in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In this case, the registrant's mark is in standard characters and the applicant's mark is in stylized characters. Here, registrant's standard character mark may be displayed in any lettering style, including the same lettering style as the applicant's mark. As such, applicant's stylized character mark will not avoid likelihood of confusion with registrant's standard character mark because registrant's mark could be presented in the same manner of display.
Because applicant's and the registrant’s marks share terms that create an overall similar commercial impressions, the marks are confusingly similar.
Comparison of the Goods
In its January 8, 2020 response, applicant seemingly agrees that applicant's and the registrant's goods are related. See applicant's response at Page 5. The trademark examining attorney agrees and now further highlights the relatedness of the parties’ goods.
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, select goods in the application and registration are identical. Specifically, both applicant and the registrant claim precious metals, precious stones, and jewelry. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Moreover, 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 registration uses broad wording to describe jewelry, which presumably encompasses all goods of the type described, including applicant’s more narrow goods in precious metals or coated therewith, namely, watches, timepieces, jewelry cases, bracelets. 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). 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)).
Further, the application uses broad wording to describe horological and chronometric instruments, which presumably encompasses all goods of the type described, including registrant’s more narrow watches and clocks. Thus, applicant’s and registrant’s goods are legally identical.
Additionally, 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.
Conclusion
The relatedness of the goods here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused and made FINAL under Section 2(d) of the Trademark Act.
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).
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE
