To: | RH US, LLC (TRADEMARKS-LASVEGAS@LRRC.COM) |
Subject: | U.S. Trademark Application Serial No. 88430209 - RH - 154066-00621 |
Sent: | February 04, 2020 01:40:29 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88430209
Mark: RH
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Correspondence Address: |
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Applicant: RH US, LLC
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Reference/Docket No. 154066-00621
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: February 04, 2020
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.
This responds to applicant’s communication dated December 13, 2019, wherein applicant 1) amended its identification of services; and 2) responded to the refusal under Trademark Act Sec. 2(d). No. 1 is acceptable and has been entered into the application record. For the reasons set forth below, the likelihood of confusion refusal is continued and made FINAL:
SECTION 2(d) REFUSAL MADE FINAL IN PART – LIKELIHOOD OF CONFUSION
Applicant seeks registration of the proposed mark “RH” in standard character form in connection with “Hotel services; cocktail lounge services; providing a database in the field of recipes and cooking information”.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 5775884 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. The refusal of registration is continued and made final with respect to the identified services “Hotel services; cocktail lounge services”.
The registered mark is “RH” and design covering, in relevant part, "Providing western, mountain, and outdoor related temporary lodging services; dude ranch services; hotel, bar and restaurant services; providing temporary lodging; Providing temporary lodging accommodation services."
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).
The applicant's mark RH is similar to the cited mark visually and phonetically given the shared presences of the letters “RH”, which form the sole literal element of each of the marks. Nonetheless, applicant argues that perceived differences in both the appearance and pronunciation of the marks precludes a likelihood of consumer confusion. The examining attorney has considered applicant’s arguments carefully and finds them unpersuasive.
With respect to appearance, applicant contends that the marks are visually distinct due to the stylized nature of the registered mark. According to the applicant, the presentation of the cited mark as a logo combining the letters “RH” with the letter “R” reversed creates an overall commercial impression that is not obviously read or understood as the letters “RH”. However, the cited registration clearly identifies the literal element of the mark as “RH”. The mark description for the cited mark also describes it as combining the letters “R” and “H”, in that order. Indeed, applicant’s discussion of the appearance of the cited mark as a “letter combination design” acknowledges these letters as “R” and “H”.
As indicated above, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i). It is reasonable to conclude that a mark identified and described as the combination “RH” and recognizable as combining the letters “R” and “H”, would be understood and pronounced by consumers as “RH”.
Applicant also argues that, due to its special form, the cited mark warrants a narrow scope of production limited to its particular combination of letters and design elements. By contrast, applicant states that the standard character proposed mark is distinguishable because it has no design elements at all. Such arguments are without merit. As explained in the initial Office action, 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 other words, the standard character nature of the proposed mark makes a likelihood of confusion more likely because applicant’s mark is interpreted as encompassing myriad manners of presentation, including those which reverse the letter “R” and/or join the letters.
Applicant goes on to argue that the cited mark is pronounced differently from the proposed mark. However, the pronunciation given by the applicant relies on wording which appears nowhere in the cited mark. Toward this end, applicant has made of record extrinsic evidence intended to demonstrate registrant’s combination of its mark with other wording in actual use. Such arguments and evidence can have no bearing on a comparison of the marks at issue. Instead, the marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Accordingly, evidence supporting this argument has not been reviewed.
Lastly, where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b). As discussed further below, the service of the parties directly overlap.
In sum, applicant has provided no credible arguments regarding a comparison of the goods. The mark clearly may be pronounced in the same manner. Moreover, the standard character nature of the proposed mark diminishes, if not removes, any distinguishability attributable to the stylized presentation of the cited mark. In view of the foregoing, a comparison of the mark must find in favor of confusing similarity.
Comparison of the Services
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).
In this case, the services of the respective parties are identical or closely related. Applicant's relevant services are limited to “Hotel services; cocktail lounge services”. Registrant’s services include “bar services”, “hotel services” and related temporary lodging services. The “hotel services” of the parties are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. 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 and/or services are related.
As to applicant’s “cocktail lounge services”, attached evidence from an online dictionary indicates that such services are essentially synonymous with “bar services”. Specifically, “cocktail lounge” is defined as “a bar, typically in a hotel, restaurant, or airport, where alcoholic drinks are served” or “a bar, often in a hotel or club, where you can buy alcoholic drinks”. As such, the services of the parties are highly similar or identical and likely to move in the same channels of trade to the same classes of purchasers. For example, both the applicant's and registrant’s hotel/bar services would likely be marketed to travelers or vacationers. Given the similarities of the marks and the services, consumers are likely to conclude that the services are somehow related or emanate from the same source.
Applicant offers no arguments or evidence regarding a comparison of the services. Instead, applicant cites its ownership of existing Reg. No. 5788021 for the proposed mark encompassing “restaurant services; bar services; coffee bars” to support approval of the proposed mark. The opinion of In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), cited by applicant in this regard is not directly applicable. Unlike the incontestable registrations discussed by the Board, applicant’s prior registration has coexisted with the of the cited registrant for less than one year. Applicant’s existing registration also encompass different services in that it does not include “hotel services” at issue in the present case. Considered in combination with similarities between the marks and services, the existence of applicant’s prior registration provides an insufficient basis to withdraw the refusal under Sec. 2(d).
Lastly, applicant argues that refusal is unwarranted because the marks at issue have coexisted in the marketplace for nearly five years without any evidence of actual confusion. However, “‘[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., 308F.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).
Accordingly, because confusion is likely, refusal of registration under Trademark Act Section 2(d) based on a likelihood of confusion is continued and made FINAL.
ADVISORY – PARTIAL ABANDONMENT
In such case, the application will proceed for the following services only: “Providing a database in the field of recipes and cooking information,” in Class 43.
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
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).
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
RESPONSE GUIDANCE