To: | Rocket Ball, Ltd. (ipgroup@nba.com) |
Subject: | U.S. Trademark Application Serial No. 88461815 - ROCKETS - 5336-US-NF |
Sent: | August 27, 2019 04:01:35 PM |
Sent As: | ecom117@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88461815
Mark: ROCKETS
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Correspondence Address: OLYMPIC TOWER 645 FIFTH AVENUE
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Applicant: Rocket Ball, Ltd.
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Reference/Docket No. 5336-US-NF
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 27, 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
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5116721, 4155015, 4558159, and 3421198. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is ROCKETS for “computer accessories, namely blank USB flash drives, pre-recorded flash drives featuring information in the field of basketball; stands adapted for computers, laptops and tablet computers; hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players; computer keyboards, computer joystick peripherals, mouse pads, computer mice, computer stylus, capacitive styluses for touch screen devices, compact disc cases, computer carrying cases, protective sleeves for laptop and tablet computers, wrist rests for use with computers, all related to basketball; battery chargers for mobile phones; USB charging ports; computer skins, namely, fitted plastic film known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants, and electronic tablets; computer game software; video game software, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely headsets, mobile phone straps; covers and stands for portable music players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; sunglasses; eyeglass frames; eyewear accessories, namely, eyewear straps and chains which restrain eyewear from movement on wearer; eyeglass and sunglass cases; magnets; disposable cameras; downloadable computer game software; downloadable interactive video games and downloadable trivia game software provided over the internet.”
1) ROCKET (Reg. No. 4558159) for “Radio devices, namely, devices for outdoor wireless radio transmission as part of an outdoor wireless network; outdoor radio receivers and transmitters used as part of an outdoor wireless network; outdoor wireless transceiver radio used as part of an outdoor wireless network.”
2) RAZZI (Reg. No. 4155015) for “Eyeglass frames; Eyeglasses; Sunglasses.”
3) RUN ROCKETS (Reg. No. 5116721, with “RUN” disclaimed) for “Eye glasses featuring computers; wearable computers in the nature of activity trackers; wearable computers; computer game software.”
4) ROKIT (Reg. No. 3421198) for “loudspeakers.”
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).
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., __ F.3d __, 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).
1) Applicant’s Mark and Registration Nos. 4558159, 5116721, and 3421198
In this case, both the applicant’s mark and Registration Nos. 4558159, 5116721, and 3421198 contain variations of the wording ROCKET. The fact that the applicant’s mark is in the plural form, while Reg. Nos. 4558159 and 3421198 are in the singular form will not obviate the likelihood of confusion in this case. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
Also, the fact that Reg. No. 3421198 is a deliberate misspelling of the wording “rocket”, that is ROKIT will not obviate the likelihood of confusion in this case. The marks are essentially phonetic equivalents and thus sound 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).
It is also the case that the fact that Reg. No. 5116721 contains the wording RUN will not obviate the likelihood of confusion in this case. The registrant has disclaimed this wording as it is merely descriptive of the registrant’s goods, making it the less dominant portion of the mark. Therefore, the dominant portion of the registrant’s mark is the wording ROCKETS which is identical to the entirety of the applicant’s wording. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Therefore, as the dominant portion of all of the marks is virtually identical in sound, identical in commercial impression, and highly similar in appearance, the marks are confusingly similar.
2) Applicant’s Mark and Registration No. 4155015
The registrant’s mark is in Italian, which is a common, modern language in the United States. See In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986). The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Italian language is a common, modern language spoken by an appreciable number of consumers in the United States.
Therefore, as the registrant’s mark directly and literally translates to ROCKETS from Italian, a common, modern language, the marks are confusingly similar.
COMPARISON OF THE GOODS
1) Applicant’s Goods and Registration Nos. 4558159 and 3421198
In this case, the application uses the broad wording of “electronic audio speakers” and “radios” to describe the goods, which presumably encompasses all goods of the type described, including registrants’ more narrow goods of “loudspeakers” and “radio devices, namely, devices for outdoor wireless radio transmission as part of an outdoor wireless network; outdoor radio receivers and transmitters used as part of an outdoor wireless network; outdoor wireless transceiver radio used as part of an outdoor wireless network.” 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.
2) Applicant’s Goods and Registration Nos. 4155015 and 5116721
In this case, attached Internet evidence shows that it is common in the applicant’s industry for the same entity to provide the applicant’s goods under the same mark as the registrants’ goods. For example, Warby Parker® provides the applicant’s goods of sunglasses, eyeglass frames, and eyeglass and sunglass cases under the same mark as the registrant’s goods of eyeglass frames, eyeglasses, and sunglasses and CountryClubPrep.com offers the applicant’s goods of sunglasses and eyewear straps under the same mark as the registrant’s goods of sunglasses.
Additionally, attached Internet evidence shows that Apple® provides the applicant’s goods of stands for electronic devices, tablet computers, computer keyboards, styluses, and battery chargers for mobile phones all under the same mark as the registrant’s goods of wearable computers. Applicant and Registration No. 5116721 also both provide computer game software. Therefore, as it is common in the applicant’s industry for the same entity to provide the applicant’s goods under the same mark as the registrants’ goods, the 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.
IDENTIFICATION OF GOODS AND SERVICES
The identification for game software, computer game programs, and software/computer programs/mobile applications in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41 or if not game software a service in Class 42. See TMEP §1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may substitute the following wording (with added wording bolded), if accurate:
Class 9: Audio recordings and video recordings featuring entertainment and information in the field of basketball; computer accessories, namely blank USB flash drives, pre-recorded flash drives featuring information in the field of basketball; stands adapted for computers, laptops and tablet computers; hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players; computer keyboards, computer joystick peripherals, mouse pads, computer mice, computer stylus, capacitive styluses for touch screen devices, compact disc cases, computer carrying cases, protective sleeves for laptop and tablet computers, wrist rests for use with computers, all related to basketball; battery chargers for mobile phones; USB charging ports; downloadable computer programs for viewing information, statistics or trivia about basketball; downloadable computer software, namely screen savers featuring basketball themes; downloadable computer software to access and view computer wallpaper; computer skins, namely, fitted plastic film known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, personal digital assistants, and electronic tablets; downloadable computer game software; downloadable video game software, video game cartridges; radios, electronic audio speakers, headphones and ear buds, wireless telephones, telephones; cell phone accessories, namely headsets, mobile phone straps; covers and stands for portable music players, electronic tablets and portable personal digital assistant devices; decorative switch plate covers, video monitors, computer monitors, binoculars; sunglasses; eyeglass frames; eyewear accessories, namely, eyewear straps and case chains which restrain eyewear from movement on wearer; eyeglass and sunglass cases; magnets; disposable cameras; credit cards, debit cards, cash cards, key cards and pre-paid telephone calling cards magnetically encoded; downloadable video recordings, video stream recordings, and downloadable audio recordings in the field of basketball provided over the Internet; downloadable computer software for viewing databases of information, statistical information, trivia, polling information, and interactive polling in the field of basketball provided over the Internet; downloadable computer game software; downloadable interactive video games and downloadable trivia game software provided over the internet; downloadable computer software for use as screensavers and wallpaper, to access and display computer browsers, for use in viewing data on the Internet; downloadable electronic publications in the nature of game schedules all in the field of basketball provided over the Internet; mouth guards for sports
Class 41: online non-downloadable computer game software; online non-downloadable video game software
Class 42: online non-downloadable computer programs for viewing information, statistics or trivia about basketball; online non-downloadable computer software, namely screen savers featuring basketball themes; online non-downloadable computer software to access and view computer wallpaper;
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 APPLICATION REQUIREMENTS
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services 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 and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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 Section 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 assigned examining attorney.
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
/Stephanie Rydland/
Examining Attorney
Law Office 117
(571) 272-7226
stephanie.rydland@uspto.gov
RESPONSE GUIDANCE