To: | Daltile Distribution, Inc. (misty_young@mohawkind.com) |
Subject: | U.S. Trademark Application Serial No. 88458224 - QUICTILE BY DALTILE - N/A |
Sent: | August 28, 2019 09:51:11 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88458224
Mark: QUICTILE BY DALTILE
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Correspondence Address:
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Applicant: Daltile Distribution, Inc.
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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 28, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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
The applicant has applied to register the mark QUICTILE BY DALTILE in standard character format for “Tile flooring, not of metal” in class 019.
The mark in Registration No. 5001763 is KWIK TILE in standard character format for “Ceramic tiles for tile floors and coverings” in class 019.
Please note, both marks are in standard character format.
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 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.
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).
In this case, applicant’s mark QUICTILE BY DALTILE is confusingly similar to the mark KWIK TILE in Registration No. 5001763. Specifically, QUICTILE in applicant’s mark is highly similar in sound and appearance to the KWIK TILE in registrant’s mark in Registration No. 5001763. KWIK in registrant’s mark is the phonetic spelling of the word QUICK. See http://www.dictionary.com/browse/quick. QUIC in applicant’s mark is an alternative spelling of the word QUICK. See http://en.wiktionary.org/wiki/quick#English. QUICK means “done, proceeding, or occurring with promptness or rapidity, as an action, process, etc.; prompt; immediate”. See http://www.dictionary.com/browse/quick. TILE means “a thin, flat or convex slab of hard material such as baked clay or plastic, laid in rows to cover walls, floors, and roofs.” See http://www.ahdictionary.com/word/search.html?q=tile. Therefore, this shared phrase means a thin, flat or convex slab of hard material laid in rows to cover walls, floors and roofs with rapidity.
Moreover, the wording in applicant’s mark QUICTILE sounds similar to the wording KWIK TILE in registrant’s mark in Registration No. 5001763, because QUIC in applicant’s mark is pronounced the same as KWIK in registrant’s mark and the word TILE in applicant’s mark and registrant’s mark is identical. See http://www.classzone.com/books/language_of_lit_gr08/spelling/spell_student_22.cfm. Therefore, the wording QUICTILE in applicant’s mark is essentially the phonetic equivalent of registrant’s mark and thus sounds similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
In summary, because the wording QUICTILE in applicant’s mark is essentially the phonetic equivalent of registrant’s mark KWIK TILE, it follows that purchasers are likely to believe that the marks identify the same source for tile flooring goods. Thus, the marks are confusingly similar.
Comparison of the Goods
The applicant’s goods are “Tile flooring, not of metal” in class 019.
The registrant’s goods in Registration No. 5001763 are “Ceramic tiles for tile floors and coverings” in class 019.
As the case law and attached evidence shows, the applicant's tile flooring goods and registrant’s ceramic tile goods for tile floors and coverings in Registration No. 5001763 are commercially related, because applicant’s broad identification encompasses registrant’s narrower identification and many companies provide these types of goods.
In this case, the application uses broad wording to describe “Tile flooring, not of metal”, which presumably encompasses all goods of the type described, including registrant’s more narrow identification of “Ceramic tiles for tile floors and coverings”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Moreover, the attached Internet evidence consists of screenshots from Emser Tile, Floor Craft, Marazzi and Shaw Floors. See http://www.emser.com/, http://www.floorcraft.org/product.php?p=tile, http://www.marazziusa.com/products and http://shawfloors.com/flooring/tile-and-stone. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. 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). Accordingly, purchasers are likely to be confused as to the source of the goods when they encounter tile flooring goods offered under highly similar marks. Therefore, applicant's goods and registrant's goods are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the goods are related. Therefore, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
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. 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
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE