United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88445025
Mark: METRO
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Correspondence Address:
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Applicant: Hogan Asphalt LLC
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Reference/Docket No. 123747
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: August 20, 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) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3470185, 2944078, 2220019, 1315803 and 4382798. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s applied-for mark is METRO in standard characters for “Asphalt.”
Registrants’ marks are:
· Reg. No. 3470185: METROBRICK in standard characters for “bricks, namely, arcitectural thin bricks and face bricks”;
· Reg. No. 2944078: METRO in standard characters for “Thin bricks, pavers and ceramic tiles”;
· Reg. No. 2220019: METRO TREAD as a typed drawing for “unglazed ceramic tile”;
· Reg. No. 1315803: METRO as a typed drawing for “Bricks”; and
· Reg. No. 4382798: METRO and design for services including “parking lot and asphalt maintenance.”
The same entity owns Reg. Nos. 3470185, 2944078, 2220019 and 1315803.
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.
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).
As it pertains to Reg. Nos. 2944078 and 1315803, applicant’s applied-for mark is METRO in standard characters, the mark in Reg. No. 2944078 is METRO in standard characters, and the mark in Reg. No. 1315803 is METRO as a typed drawing. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, 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 and/or services. Id. Therefore, applicant’s applied-for mark and the marks in Reg. Nos. 2944078 and 1315803 are confusingly similar.
As it pertains to Reg. Nos. 3470185, 2220019 and 4382798, applicant’s applied-for mark and registrants’ marks contain the shared wording METRO. This shared wording creates a similar overall commercial impression in the compared marks.
In addition, METRO is the dominant wording in each of the respective marks.
METRO is the only wording in applicant’s applied-for mark and in Reg. No. 4382798, and METRO is the first word in Reg. Nos. 3470185 and 2220019. 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) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Therefore, consumers are inclined to focus on the identical wording in applicant’s applied-for mark and in registrants’ marks when making their purchasing decisions.
The design element of the mark in Reg. No. 4382798 is insufficient to overcome a likelihood of confusion. 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)).
Moreover, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance, sound, meaning, connotation and commercial impression in the respective marks, that applicant's goods provided under the METRO mark constitute a new or additional line of products from the same source as the goods and services provided under the previous METROBRICK, METRO TREAD and METRO marks with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrants’ marks. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
Therefore, applicant’s applied-for mark and the marks in Reg. Nos. 3470185, 2220019 and 4382798 are confusingly similar.
Taking all of the above into consideration, the applicant’s applied-for mark and registrants’ marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods and Services
As it pertains to Reg. Nos. 3470185, 2944078, 2220019 and 1315803, applicant’s asphalt is related to registrant’s bricks and ceramic tiles because it is common for the same entity to sell asphalt as well as bricks and ceramic tiles. Therefore, consumers encountering applicant’s applied-for mark and registrant’s mark used in connection with the respective goods are likely to believe that the goods emanate from the same source.
The attached Internet evidence consists of web pages from the websites of The Home Depot, Lowe’s, and Ace Hardware, showing that these entities all sell asphalt as well as bricks and ceramic tiles. This evidence establishes that the relevant goods are 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 goods and the goods in Reg. Nos. 3470185, 2944078, 2220019 and 1315803 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).
The attached Internet evidence consists of web pages from the websites of Wolf Paving, Joseph McCormick Construction Co., and American Asphalt Company, showing that these entities all manufacture asphalt and also provide parking lot and asphalt maintenance services. This evidence establishes that the same entity commonly manufactures and provides the relevant goods and services and markets the goods and services under the same mark, and that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, consumers encountering applicant’s applied-for mark and registrant’s mark used in connection with the respective goods and services are likely to believe that the goods and services emanate from the same source. Thus, applicant’s goods and the services in Reg. No. 4382798 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).
Based on the attached evidence and the analysis above, applicant’s and registrants’ goods and services are related.
Because applicant’s and registrant’s marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Trademark Act.
Applicant should also note the following potential bar to registration.
Advisory: Potential Section 2(d) Refusal – Pending Application
The filing date of pending U.S. Application Serial No. 88157658 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
Response Guidelines
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
RESPONSE GUIDANCE