Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  August 30, 2019

 

INTRODUCTION

 

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.

 

SUMMARY OF ISSUES:  

 

• Section 2(d) Refusal - Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2841667 and 2612196. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

 

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. 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.

 

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).

 

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., 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 (CCPA 1971)); TMEP §1207.01(b).

 

Further, 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”).

In this case, applicant seeks to register the mark LINECOACH. Registrant’s mark for U.S. Registration No. 2841667 is LINEMAN.  In the present case, both applicant and registrant’s marks are similar in appearance and contain the identical first syllable LINE.  In addition, the terms LINECOACH and LINEMAN are football terms – being used in both cases here for chemical goods for agricultural use in International Class 1.  Pursuant to the attached dictionary definitions from Vocabulary.com and Free Dictionary (screenshots from August 23, 2019), a “line coach” is an “assistant football coach in charge of the linemen.”  Further, according to the American Heritage Dictionary and Merriam-Webster Dictionary entries (screenshots dated August 23, 2019), a “lineman” is a “player positioned on the line of scrimmage near the ball” in football and “a player in the forward line of a team; specifically: a football player in the line.”  Accordingly, both applicant and registrant are using football terms, LINECOACH and LINEMAN, to describe very similar agricultural-use goods.  Thus, the appearance, connotation and commercial impression between applicant’s mark and registrant’s mark are likely to lead to confusion among consumers for these Class 1 goods for agricultural use.

 

Similarly, applicant’s mark for LINECOACH is highly similar to registrant’s mark LINEMASTER for similar goods. The term LINE is the first syllable in each trademark.  Further, a COACH is defined as “one who instructs or trains” or “one who instructs players in the fundamentals of a sport and directs team strategy’ per the Merriam-Webster Dictionary definition.  It is “a person who gives instruction or guidance” per the American Heritage Dictionary definition. Similarly, a MASTER is “a worker qualified to teach apprentices,” “an expert,” someone “whose teachings or doctrines are accepted by followers” or “one having authority over another.” See attached American Heritage Dictionary of the English Language or the Merriam-Webster Dictionary definition. Accordingly, the terms LINECOACH and LINEMASTER have the exact connotation, since a Coach and a Master are both positions of authority providing guidance and instruction to others, especially for those consumers who are not at all familiar with football or football terminology.

 

Accordingly, applicant and registrants’ marks are similar in appearance, connotation and commercial impression such that a likelihood of confusion exists.  Moreover, where the goods 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).

 

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).

 

Applicant seeks to register its mark LINECOACH for “chemicals for use in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides.” Registrant for the mark LINEMAN uses its mark for “fertilizers and adjuvants for agricultural, commercial and domestic use.”   Pursuant to the attached dictionary definition from the Merriam-Webster Dictionary, an adjuvant is “an ingredient that modifies the action of the principal ingredient.” (See attached Penn State Extension article entitled “Adjuvants for Enhancing Herbicide Performance”.) Further, as stated in the Merriam-Webster dictionary definition, a “fertilizer” is “a substance (such as manure or a chemical mixture) used to make soil more fertile.”  Similarly, in the case of the mark LINEMASTER, registrant is using its mark on “chemicals preparations, consisting of organic dispersant polymers and long-chain linear polyphosphates, for use as a water penetration aid for agricultural purposes.”  In this case, applicant and both registrants are providing chemical goods in Class 1 for agricultural use using the marks LINECOACH, LINEMAN and LINEMASTER, respectively – and the as further elaborated below, the attached evidence of record shows that these types of goods often emanate from the same source under the same marks.

 

The attached Internet evidence, consisting of the websites of retailers and manufacturers in the field of agricultural products, including Scotts, MiracleGro, Innvictis Crop Care LLC, and Sanders (screenshots dated August 22 and 26, 2019), establishes that the same entity commonly manufactures and produces the relevant goods -- chemicals for agricultural and horticultural use to enhance growth as well as adjuvants, a water penetration aid and fertilizer to enhance crop growth.  Further, these same entities will market the relevant goods under the same mark, through the same trade channels. Thus, applicant’s goods and registrants’ goods are often used by the same classes of consumers in the same fields of use.  Accordingly, applicant’s and registrants’ goods 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).

 

Further, the trademark examining attorney has attached a representative sample of 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 (“chemicals for use in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides” and registrants (in this case, “fertilizers and adjuvants for agricultural, commercial and domestic use” or “Chemicals preparations, consisting of organic dispersant polymers and long-chain linear polyphosphates, for use as a water penetration aid for agricultural purposes”) -- all for agricultural use.  In other words, this evidence shows that the goods listed therein (all chemical preparation for the enhancement of plant growth), such as those goods identified by applicant under the mark LINECOACH and those identified by registrants using the marks LINEMAN or LINEMASTER, respectively, are of a kind that may all 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).

 

Accordingly, the evidence of record establishes that the same consumers will often shop for these goods in the same retail establishments or online since they are similar or complementary in terms of purpose or function – both goods are used by consumers for better crop or plant growth.  Thus, applicant’s and registrant’s goods 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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

RESPONSE GUIDELINES

 

Please do not hesitate to 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

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding

 

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  

 

/Karen Estilo Owczarski/

Trademark Attorney

Law Office 105

571-272-3758

karen.owczarski@uspto.gov

 

 

 

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 August 30, 2019 for

U.S. Trademark Application Serial No. 88452561

 

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. 

 

 

Owczarski, Karen

/Karen Estilo Owczarski/

Trademark Attorney

Law Office 105

571-272-3758

karen.owczarski@uspto.gov

 

 

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 August 30, 2019, 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.”