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. 88441930
Mark: SPARTAN
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Correspondence Address: |
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Applicant: Spartan Race, Inc.
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Reference/Docket No. 386499-00044
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 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· Section 2(d) Refusal – Likelihood of Confusion
· Prior Filed Application
· Amendment of Classification and Identification of Goods required
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The Applicant’s mark is SPARTAN for "sporting goods, weightlifting, strength, athletic, physical fitness, exercise, physical fitness conditioning, gymnasium and body-training apparatus, equipment, machines and devices, namely, weightlifting bars, dumbbells, exercise weights, hand weights, weighted plates, weightlifting bar collars and clamps for use with weightlifting bars, and sold as a unit with the weightlifting bars, weightlifting chalk, weightlifting chalk bowls and chalk stands for use with weightlifting chalk, storage racks for athletic equipment, jump ropes, weightlifting belts, foam exercise rollers, sandbags made of neoprene for physical fitness exercises, weightlifting wrist wraps, weightlifting knee wraps, weightlifting elbow wraps, weightlifting shin and calf wraps, jump ropes, speed ropes, skipping ropes, climbing ropes, training ropes, physical fitness conditioning ropes, pull-up bars, treadmills, foam exercise leg rollers, foam exercise muscle rollers, kettlebells, medicine balls, slam balls, balls for exercise, training and agility, rowing machines, stationary bicycles, abdominal mats, abdominal wheels, exercise machine mats, exercise stability balls, exercise reflex balls not for medical purposes, medicine balls, balance balls, plyometric boxes, gymnastics rings, electrical stimulation belts for strengthening muscles, ankle weights, wrist weights, weightlifting gloves, workout gloves, exercise gloves, obstacle course racing gloves, stretch bands for exercise, straps and bands affixed to doors or objects for performance of various physical fitness exercises, resistance bands, resistance tubing, strength bands, cones for speed and agility training, elevation ladders, obstacles for obstacle course training, racing and competitions, namely, track and speed hurdles, agility poles, grappling gloves, kick pads for use in martial arts, arm guards for athletic use, wrist guards for athletic use, forearm guards for athletic use, calf guards for athletic use, shin and instep guards for athletic use, throwing spears used in athletic competitions, and bags specially adapted for sports equipment".
The Registrant’s mark is SPARTAN FOR THE COURAGEOUS IN MIND MADE IN U.S.A. (+design) for, inter alia, "boxing equipment, namely boxing gloves, boxing headgear, boxing protective cups, boxing heavy bags, boxing speed bags, boxing equipment bags, boxing double end bags and boxing gymnasium equipment, namely skip rope, ankle and wrist weights, chinning bars, push-up floor bars, weightlifting belts, weightlifting gloves, dumbell and barbell rack, chest pulley weights, hand grips, waist trimmer, exercise training mat, wheel exerciser, tension bender bar, neck developer, medicine ball, hand wraps, mouthpieces, target punch mitts, boxing ring, ring padding, ring ropes, turnbuckles, corner cushions, ring canvas, corner stool, ring bell and ring stairway".
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
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
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).
Applicant's mark is SPARTAN.
Registrant's mark is SPARTAN FOR THE COURAGEOUS IN MIND MADE IN U.S.A. (+design).
As the first or only term in each mark, the common wording "SPARTAN" is the dominant feature of each mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Moreover, the wording "SPARTAN" in the registered mark is dominant, while the remaining wording is displayed in a significantly smaller size underneath the common wording "SPARTAN".
Moreover, the marks share the same overall commercial impression. Specifically, the wording "SPARTAN" leaves consumers with the mental impression of a person with great courage and self-discipline, characteristic of soldiers from ancient Sparta (See attached evidence from merriam-webster.com). Consumer confusion has been held likely even for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning. Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); see In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); TMEP §1207.01(b). The addition of the design of a fighter in the registered mark only bolsters this commercial impression.
Furthermore, generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
COMPARISON OF THE GOODS
The goods 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 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).
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 as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely, various exercise equipment, including sandbags, weights, exercise mats, and barbells, 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).
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).
In light of the similarities between the marks and the relatedness of the goods, it is likely that consumers who encounter the parties' goods will falsely conclude that they originate from the same source.
Although Applicant’s mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration. If Applicant responds to the refusal(s), Applicant must also respond to the requirement set forth below.
PRIOR FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
AMENDMENT OF CLASSIFICATION AND IDENTIFICATION OF GOODS REQUIRED
Additionally, applicant has provided the application fee for only one international class. Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86. Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Applicant may adopt the following identification, if accurate:
International Class 022: "climbing ropes"
International Class 027: "personal exercise mats, namely, abdominal mats in the nature of personal exercise mats for abdominal exercises"
International Class 028: “sporting goods, weightlifting, strength, athletic, physical fitness, exercise,
physical fitness conditioning, gymnasium and body-training apparatus, equipment, machines and devices, namely, weightlifting bars in the nature of exercise bars, dumbbells,
exercise weights, hand weights in the nature of exercise weights, weighted plates in the nature of exercise weights, weightlifting bar collars and clamps specially
adapted for use with weightlifting bars in the nature of exercise bars, and weightlifting bar collars and clamps specially adapted for use with weightlifting
bars in the nature of exercise bars sold as a unit with the weightlifting bars in the nature of exercise bars, weightlifting chalk, weightlifting chalk bowls and chalk stands
specially adapted for use with weightlifting chalk, storage racks for athletic equipment, jump ropes, weightlifting belts, foam exercise rollers, sandbags in the nature of
medicine balls made of neoprene specially made for physical fitness exercises, weightlifting wrist wraps in the nature of athletic wraps for supporting wrists during
exercise, weightlifting knee wraps in the nature of athletic wraps for supporting knees during exercise, weightlifting elbow wraps in the nature of athletic wraps for
supporting elbows during exercise, weightlifting shin and calf wraps in the nature of athletic wraps for supporting shins and calves during exercise, jump ropes,
speed ropes in the nature of jump ropes, skipping ropes, climbing ropes, training ropes in the nature of jump ropes, physical fitness conditioning ropes
in the nature of weighted skipping ropes, pull-up bars in the nature of training bars, exercise treadmills, foam exercise leg rollers, foam exercise muscle
rollers, kettlebells, medicine balls, slam balls in the nature of exercise balls, balls for exercise, training, and agility, rowing machines, stationary
exercise bicycles, abdominal mats, abdominal wheels in the nature of abdominal wheel rollers for fitness purposes, exercise machine mats in the nature
of mats specially adapted for exercise machines, exercise stability balls, exercise reflex balls not for medical purposes, medicine balls, balance balls in the nature of
exercise balls, exercise equipment, namely, plyometric boxes, gymnastics rings, electrical stimulation belts for strengthening muscles, ankle weights, wrist weights for
exercise, weightlifting gloves, workout gloves, exercise gloves in the nature of workout gloves, obstacle course racing gloves specially adapted for use with obstacle
course exercise equipment, stretch bands for exercise, straps and bands affixed to doors or objects specially adapted for performance of various physical fitness exercises,
resistance exercise bands, resistance tubing in the nature of exercise bands, strength exercise bands, cones for speed and agility training, elevation
ladders for speed and agility training, obstacles for obstacle course training, racing and competitions, namely, track and speed hurdles, agility poles, grappling gloves, kick pads for
use in martial arts, arm guards for athletic use, wrist guards for athletic use, forearm guards for athletic use, calf guards for athletic use, shin and instep guards for athletic use, throwing
spears used in athletic competitions in the nature of javelins;, and bags specially adapted for sports equipment”
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple Class Requirements
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least three international classes; however, applicant submitted a fee sufficient for only one international class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
If the applicant has any questions or requires assistance in responding to this Office Action, please contact the examining attorney at the contact information provided below. Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Yi, Crystal
/Crystal H. Yi/
Examining Attorney
Law Office 123
571.270.0763
crystal.yi@uspto.gov
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.
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RESPONSE GUIDANCE
