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:  March 03, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on January 31, 2020.

 

In a previous Office action(s) dated July 31, 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 required to satisfy the following requirement(s):  amend the identification of goods and/or services and disclaim descriptive wording in the mark.  Applicant was also advised about several prior-pending applications that could potentially create an additional bar to registration, if such marks were to mature to registration. 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided and disclaimer provided.  See TMEP §§713.02, 714.04. 

 

Further, the following advisories also have been obviated:  potential 2(d) refusal with respect to Ser. Nos. 87490869 and 87491057 (both now abandoned).  See TMEP §§713.02, 714.04. 

 

In addition, the following advisory has been withdrawn:  potential 2(d) refusal with respect to Ser. No. 87642753.  See TMEP §§713.02, 714.04. 

 

However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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:

 

• Section 2(d) Refusal – Likelihood of Confusion

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

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(s). 1853682.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  Please reference the registration made of record in the Office Action dated July 31, 2019. 

 

The trademark examining attorney incorporates by reference all of the relevant arguments and evidence from the prior Office Action dated July 31, 2019 and further submits the following: 

 

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).  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 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. 

 

Applicant is seeking registration for the following amended goods:  “fabrics for textile use; non-woven textile fabrics; woven fabrics; knitted fabrics; thermoplastic coated fabrics for use in manufacturing of bedding and sleep products, furniture, automotive products, and wearing apparel; laminated textiles for the manufacture of bedding and sleep products, furniture, automotive products, and wearing apparel; fabrics for the manufacture of mattresses, mattress toppers, mattress covers, mattress protectors, mattress encasements, bedding, pillows, and upholstered furniture and home furnishings; fireproof upholstery fabrics and bedding fabrics made from flame resistant materials; fabrics for the manufacture of footwear; fabrics for the manufacture of luggage; fabrics for the manufacture of food packaging; fabrics for the manufacture of automotive interior covers,” in International Class 24 in connection with the mark “PRECISION TEXTILES” & design.  The cited registration identifies the following goods:  “fabric used in the manufacture of apparel, protective garments, medical garments, military and support parachutes and poncho, garment labels, filters, car covers, hamper bags, shoe covers, drapes, window treatments, instrument wraps, mold release agents, fiber re-inforced veils, impression fabrics for use in typewriters, computer printers and other impact printing devices,” in International Class 24 in connection with the mark “PRECISION FABRICS GROUP, INC.”. 

 

 

Marks are Similar

 

In this case, the registered mark is for “PRECISION FABRICS GROUP, INC.” displayed as a typed drawing.  The applied-for mark is for “PRECISION TEXTILES”, displayed in a stylized manner and including a design element.  The trademark examining attorney maintains that the visual, phonetic and overall commercial impressions derived from the respective marks are substantially similar. 

 

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).

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

A mark in typed or 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 and/or with a design element 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 its response to the Office Action, applicant submits that applicant’s mark and registrant’s mark have co-existed for over 30 years without any evidence of known confusion.  Further, applicant submits that the overall commercial impressions of the marks, despite their common element, is sufficiently different as to avoid a likelihood of confusion.  Please reference applicant’s response to the Office Action dated January 31, 2020.  The trademark examining attorney has considered applicant’s arguments and found the foregoing unpersuasive. 

 

The trademark examining attorney submits that “‘[a] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). 

 

In the present case, applicant states that registrant is, in fact, a competitor within its industry.  Please reference applicant’s response to the Office Action dated January 31, 2020.  Further, the fact that applicant, at one time, used a varied, but similar formative mark to identify its goods, i.e., “PRECISION CUSTOM COATINGS” further lends itself to the notation that consumers are likely to believe that “PRECISION” formative marks for related goods would emanate from a singular source origin.   

 

The trademark examining attorney reiterates that  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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Accordingly, the trademark examining attorney maintains 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 and/or services 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).   Here, the descriptive secondary wording in the respective marks, i.e., “TEXTILES” vs. “FABRIC GROUP INC.” does not sufficiently distinguish the marks with respect to a likelihood of confusion finding, nor does wording or acronyms that are not part of the respective marks, i.e., “PCC”, “PFG” or the like do so either.

 

Finally, with respect to the stylization/design elements present in applicant’s mark, the trademark examining attorney maintains that when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Accordingly, the slight stylization/design elements present in applicant’s mark does not obviate the substantial similarities present in the literal and source-identifying elements of the marks overall.   Further, since a standard character or typed drawing claim allows an applicant or registrant to display a mark in any font or stylization, registrant could display its mark in a manner identical to that of applicant. 

 

Based on the foregoing, the trademark examining attorney maintains that the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.

 

 

Goods are Related

 

Applicant is seeking registration for the following amended goods:  “fabrics for textile use; non-woven textile fabrics; woven fabrics; knitted fabrics; thermoplastic coated fabrics for use in manufacturing of bedding and sleep products, furniture, automotive products, and wearing apparel; laminated textiles for the manufacture of bedding and sleep products, furniture, automotive products, and wearing apparel; fabrics for the manufacture of mattresses, mattress toppers, mattress covers, mattress protectors, mattress encasements, bedding, pillows, and upholstered furniture and home furnishings; fireproof upholstery fabrics and bedding fabrics made from flame resistant materials; fabrics for the manufacture of footwear; fabrics for the manufacture of luggage; fabrics for the manufacture of food packaging; fabrics for the manufacture of automotive interior covers,” in International Class 24.  The cited registration identifies the following goods:  “fabric used in the manufacture of apparel, protective garments, medical garments, military and support parachutes and poncho, garment labels, filters, car covers, hamper bags, shoe covers, drapes, window treatments, instrument wraps, mold release agents, fiber re-inforced veils, impression fabrics for use in typewriters, computer printers and other impact printing devices,” in International Class 24.  The trademark examining attorney maintains that the respective goods are sufficiently related as to cause a likelihood of confusion. 

 

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).

 

In its response to the Office Action, applicant does not directly dispute the relatedness of the respective goods.  Instead, applicant submits that the sophistication of it and registrant’s consumers and the nature of the goods as non-impulse purchase goods, obviates any likelihood of confusion.  Please reference applicant’s response to the Office Action dated January 31, 2020.  The trademark examining attorney has considered applicant’s arguments and found the foregoing unpersuasive.

 

The trademark examining attorney submits that the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

Accordingly, although the trademark examining attorney does not necessarily dispute that the relevant consumers are sophisticated purchasers who are well aware of the nature of particular goods to which they are purchasing, but this does not necessarily mean that are sophisticated as to trademark law, particularly in light of the various “PRECISION” formative marks that applicant has used in connection with its company and offering of goods.

 

To provide further support for the above-referenced contentions, the trademark examining attorney maintains that it is well-established that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark.  Further, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in many of the same fields of use.  Thus, applicant’s and registrant’s goods and/or 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).

 

In addition to the evidence made of record in the Office Action dated July 31, 2019, please evidence further representative examples of such companies regarding same (please also see attached evidence):

 

1. Evidence from Seattle Fabrics, http://www.seattlefabrics.com/Fabric_c_1.html;
2. Evidence from Elevate Textiles, http://www.elevatetextiles.com/home/what-we-do/;
3. Evidence from Hamrick Mills, http://www.hamrickmills.com/products.php;
4. Evidence from Schott Textiles, http://schotttextiles.com/ and http://schotttextiles.com/our-products/; and
5. Evidence from Carnegie, http://carnegiefabrics.com/ and http://carnegiefabrics.com/products/.

 

For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

 

Further, 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 and/or services listed therein, namely textiles and fabrics for use in a variety of industries, 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).  In addition to the registrations made of record in the Office Action dated July 31, 2019, please evidence further representative examples of such registrations (please also see attached evidence):

 

-          Reg. Nos. 5606524, 5783580, 5685311, 5997461, 5543643, 5915805, 5981222, 5912514, 5878142 and 5799154.

 

Therefore, the trademark examining attorney maintains that applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.

 

Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and the refusal to register the applied-for mark under Section 2(d) of the Trademark Act is maintained and made FINAL.

 

 

 

RESPONSE GUIDELINES

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

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).

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

(571) 272-9740

erin.dyer@uspto.gov (preferred)

 

 

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 03, 2020 for

U.S. Trademark Application Serial No. 88423355

 

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. 

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

(571) 272-9740

erin.dyer@uspto.gov (prefer

 

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 03, 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.”