United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88416895
Mark: OZARK TRAIL OUTDOOR EQUIPMENT
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Correspondence Address:
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Applicant: Walmart Apollo, LLC
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Reference/Docket No. 81379065
Correspondence Email Address: |
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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: July 22, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) PARTIAL-REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2011197. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register the mark OZARK TRAIL OUTDOOR EQUIPMENT in International Classes 005, 029, and 030 for, inter alia:
The registrant owns the mark OZARK TRAILS for “meats” in international class 029.
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.
A. Similarity of 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 the present case, the registrant’s mark is OZARK TRAILS, in standard characters, i.e., without any claim to particular font, style, size, or color. The applicant’s mark consists of the term “OZARK TRAIL OUTDOOR EQUIPMENT”, also in standard characters. The applicant’s mark contains the entirety of the registrant’s mark sans the “S”. Registrant’s mark is merely the plural of the dominant feature of applicant’s mark, thus the applicant’s mark conveys an overall commercial impression that is highly similar to that of the registrant’s mark because of the shared wording “OZARK TRAIL” and the similar dominance with which “OZARK TRAIL” is featured in the respective marks.
The addition of the wording “OUTDOOR EQUIPMENT” does not obviate the similarity of the marks in commercial impression because this wording merely describes a characteristic of applicant’s goods as energy bars that are designed for the outdoors and, moreover, is the second part of the mark and therefore is less dominant in creating the mark’s overall commercial impression. Based on the relative distinctiveness and prominence of the wording “OZARK TRAILS” as the first part of the applicant’s mark, OZARK TRAILS is the part of the mark that consumers are most likely to focus on and remember. As a result—given the similarity of OZARK TRAIL to OZARK TRAILS in appearance, sound, and meaning—the applicant’s mark conveys an overall commercial impression that is highly similar to that of the registrant’s mark; and 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. Id.
Therefore, the marks are confusingly similar.
In the present case, applicant seeks registration of the applied-for mark for a variety of food bars. The cited mark is registered for “meat”. The compared goods are closely related because they are both food products that are commonly consumed in the same context by the same class of consumers, are goods that travel in the same trade channels, and are the types of goods that may emanate from a single entity.
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).
Here, the attached evidence from EpicProvisions.com provides an example of an entity that produces both meat in the form of energy bars and fruit-based meal replacement bars, and markets both of the products under the same mark. Additionally, the attached article from AlissaRumsey.com demonstrates that meat bars are considered energy bars; and the attached Internet articles show that meat and bars of the type identified in the application (e.g., energy bars, fruit-based meal replacement bars, cereal-based energy bars) are commonly listed together as the best snacks to bring on hikes. See attachments from http://spoonuniversity.com/lifestyle/10-best-hiking-snacks (“Ten Best Hiking Snacks”), http://www.self.com/gallery/snacks-hikers-swear-by (“13 Energizing Snacks That Frequent Hikers Swear By”), http://hikeheaven.com/best-hiking-snacks/ (“The 5 best hiking snacks”), http://www.osprey.com/stories/5-healthy-hiking-snacks/ (“Adventure Dining Guide: 5 Healthy Hiking Snacks”). In sum, this evidence shows that the goods identified in the application and registration are related and/or promoted in a manner such that the mistaken belief could arise that the goods emanate from the same source
Furthermore, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely energy bars and meats, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Additionally, as both goods are food products, the relevant goods are presumed to be 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).
Therefore, upon encountering OZARK TRAIL OUTDOOR EQUIPMENT for the various food bars identified in the application, and OZARK TRAILS for “meats”, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source or are connected in some way. Accordingly, registration of the applied-for mark is refused pursuant to Section 2(d) of the Trademark Act.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “OUTDOOR EQUIPMENT” because it is not inherently distinctive. These unregistrable terms are at best are merely descriptive of a characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached dictionary evidence shows this that “OUTDOOR” means “suited to the open air” http://www.ahdictionary.com/word/search.html?q=outdoor) and “EQUIPMENT” means “anything kept, furnished, or provided for a specific purpose” (http://www.dictionary.com/browse/equipment). Therefore, the wording merely describes a characteristic or use of applicant’s goods, namely, clothing and food that are designed to be suited to the open air. Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “OUTDOOR EQUIPMENT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONDING TO THIS OFFICE ACTION
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 nonfinal Office action
/Kevin Flebbe/
USPTO
Examining Attorney
Law Office 110
kevin.flebbe@uspto.gov
RESPONSE GUIDANCE