To: | Vullion Group Pty Ltd (legal@vullion.com) |
Subject: | U.S. Trademark Application Serial No. 88452105 - VIKING - N/A |
Sent: | August 22, 2019 01:43:21 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88452105
Mark: VIKING
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Correspondence Address: |
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Applicant: Vullion Group Pty Ltd
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Reference/Docket No. N/A
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 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) REFUSAL
Standard of Analysis for Section 2(d) Refusal
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.
Facts
Applicant has applied to register the mark “VIKING”for use on “Bowls; Bowls made of precious metal; Mugs; Mugs of precious metal; Mugs, not of precious metal; Shaving brush holders; Shaving brush stands; Shaving brushes; Shaving brushes of badger hair; Shaving dishes; Shaving pots; Cups and mugs; Glass bowls; Holders for shaving brushes; Porcelain mugs; Rinsing bowls; Stands for shaving brushes” in International Class 21.
U.S. Registration No. 5428366 for the mark “STRIKING VIKING” with design is used in connection with “Combs” in International Class 21.
U.S. Registration No. 2493555 for the mark “VIKING” is used in connection with, in relevant part, “Household utensils and accessories for cooking, cleaning and preparing food, namely, pots and pans, grills, spoons for mixing, serving and basting, pots and pan scrapers, spatulas, turners, whisks, sieves, strainers, chopping blocks, and graters” in International Class 21.
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, applicant’s mark and the marks of registrant share the term “VIKING” and this term would be displayed and pronounced identically and the word connotes identical commercial impressions.
Even though registrant’s mark contains a design element and the word “STRIKING”, these elements do not obviate the similarities between the marks. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In this case, “VIKING” is the dominant element in both marks. The design element only adds ornamentation and the word “STRIKING” serves only to modify the word “VIKING”. Therefore, these elements do not obviate the similarities between the marks.
Therefore, the marks are confusingly similar.
Relatedness of Goods/Services
Applicant identifies “Bowls; Bowls made of precious metal; Mugs; Mugs of precious metal; Mugs, not of precious metal; Shaving brush holders; Shaving brush stands; Shaving brushes; Shaving brushes of badger hair; Shaving dishes; Shaving pots; Cups and mugs; Glass bowls; Holders for shaving brushes; Porcelain mugs; Rinsing bowls; Stands for shaving brushes” in International Class 21.
U.S. Registration No. 5428366 identifies “Combs” in International Class 21.
U.S. Registration No. 2493555 identifies, in relevant part, “Household utensils and accessories for cooking, cleaning and preparing food, namely, pots and pans, grills, spoons for mixing, serving and basting, pots and pan scrapers, spatulas, turners, whisks, sieves, strainers, chopping blocks, and graters” in International Class 21.
In this case, the applicant and registrants all identify household accessories personal grooming accessories. Registrants identify combs and pots and pans among other goods while applicant identifies shaving accessories, bowls, mugs, and cups. Therefore, the goods of applicant and registrants are closely related.
Response to Section 2(d) Likelihood of Confusion Refusal
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
POTENTIAL SECTION 2(D) REFUSAL – MULTIPLE PENDING APPLICATIONS
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 marks in the referenced applications. 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.
TEAS PLUS AND TEAS RF ADVISORY
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.
RESPONDING TO THIS OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action
/John Schmidt/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7082
john.schmidt@uspto.gov
RESPONSE GUIDANCE