Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  March 20, 2020

 

This letter confirms applicant’s response filed February 28, 2020.  Applicant’s amended identification of goods and claim of ownership of prior registrations statement have been noted and made of record.  In addition, counsel’s bar membership information has been noted for the record.

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Application suspended until disposition of cited registration.  Registration maintenance documents are or were due to be filed for U.S. Registration Nos. 4483077, one of two registrations cited against applicant in a refusal based on Trademark Act Section 2(d).  15 U.S.C. §1052(d).  If the maintenance documents are not timely filed and accepted by the USPTO, the cited registration will cancel and/or expire and will no longer bar registration of applicant’s mark under Section 2(d).  See 15 U.S.C. §§1058, 1059, 1141k.  Action on this application is suspended for six months to await disposition of the cited registration; after which, the trademark examining attorney will determine whether to maintain or withdraw the Section 2(d) refusal.  See 37 C.F.R. §2.67; TMEP §716.02(e). 

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

Outstanding Refusal - Likelihood of Confusion

A.  Object to Applicant’s Introduction of Evidence

As evidence against the refusal, applicant provided screen shots or printouts of webpages noted as Exhibits C and D that do not specify the dates they were downloaded or accessed and the complete URL.  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; see TMEP §710.01(b).  Accordingly, these webpages will not be considered.

B.  Comparison of Marks

As noted in the Office Action dated August 29, 2019, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).

Applicant argues that the marks are readily distinguishable as to obviate a likelihood of confusion because the applied-for mark contains the additional letter “S”.  However, 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).

Applicant further contends that the stated refusal should be withdrawn because “there are other registered ‘ROCKET’ marks coexisting on the US register, marketing similar goods.”  In support of this theory, applicant submitted printed or electronic copies of third-party registrations for marks containing the word “ROCKET” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  However, applicant’s reliance on these registrations is misplaced because the registered marks RED ROCKET, JOE ROCKET, ROCKET DOG, ROCKETSHIP, ROCKET PACK AND ROCKET & REX are readily distinguishable from the marks at issue and convey completely different commercial impressions.

The weakness or dilution of a particular mark is determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  However, evidence comprising a small number of third-party registrations for dissimilar marks with similar goods, as in the present case, is entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the word “ROCKET” is weak or diluted. 

For the reasons set forth above, and inasmuch as the marks share the virtually identical terms ROCKET and ROCKETS and would at the very least engender similar meanings as well as commercial impressions, source confusion is likely. 

 C.  Comparison of Goods

Applicant contends that the goods of the parties are unrelated because “[it] does not sell its products in the same channels of trade as the other registered marks”.  However, the compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  Rather, they need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). 

Furthermore, the fact that the goods of the parties may differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. 

In addition, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registrations at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).  

In this case, applicant’s goods are identified as follows:   

“Athletic bags; shoe bags for travel; overnight bags; umbrellas; backpacks; baby backpacks; knapsacks; duffel bags; tote bags; beach bags; beach tote bags; drawstring pouches; luggage; luggage tags; patio umbrellas; beach umbrellas; valises; attaché cases; billfolds; wallets; briefcases; canes; business card cases; book bags; all-purpose sports bags; golf umbrellas; gym bags; purses; coin purses; fanny packs; waist packs; cosmetic cases sold empty; garment bags for travel; handbags; key cases; suitcases; toiletry cases sold empty; trunks for traveling and rucksacks; footlockers; bags for carrying pets; pet clothing; pet leashes; pet collars; all of the foregoing to promote the sport of basketball”, in International Class 18. 

Registrants’ goods are identified, in relevant part, as follows:   

“Key rings, trinkets, or fobs of precious metal”, in International Class 14; 

“Luggage; duffle bags; back packs, backpacks, bags, namely, map pouches”, in International Class 18; and

“Beds for household pets; nesting boxes for household pets; kennels for household pets; pet cushions”, in International Class 20. 

Absent restrictions in an application and/or registration, the identified goods 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

In this case, contrary to applicant’s position regarding channels of trade, the identifications set forth in the application and registrations have no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade and are available to the same class of purchasers.

Further, the registrations use broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including (1) key rings, trinkets, or fobs of precious metal, (2) luggage, duffle bags, back packs, backpacks, bags in the nature of map pouches, (3) beds for household pets, nesting boxes for household pets, kennels for household pets and pet cushions, all promoting the sport of basketball and sold in various sports venues, concessions stands and stadiums, which are identical and undeniably commercially-related to the applicant’s goods.

In further support of the stated refusal, the examiner previously attached thirty third-party registrations showing the same marks registered with duffle bags, athletic bags, travelling trunks and similar bags, key rings and key cases and pet supplies such as bags for carrying pets, pet clothing, pet leashes and/or pet collars and beds, cushions and/or kennels for pets.  This evidence shows that the goods of the parties are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); 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).  Applicant does not dispute this evidence.

Applicant further posits that confusion is unlikely because “[the registered owner of U.S. Registration No. 4711076] distributes motorcycle and snowmobile accessories”.  Thus, according to applicant, the bags registered in connection with this mark are “for motorcycle and snowmobile as evidenced by Exhibit D.”  However, the examiner’s previous objection to applicant’s evidence and statements regarding unlimited identifications and channels of trade are hereby incorporated by reference. 

Notwithstanding these objections and statements, a trademark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

What’s more, where the marks of the respective parties are virtually identical and highly similar, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

In response to applicant’s argument regarding sophisticated purchasers, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). 

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrants from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrants. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

Based on the foregoing remarks, because confusion as to source is likely, the refusal to register under Trademark Act Section 2(d) based on a likelihood of confusion with the registered marks ROCKET and ROCKET in U.S. Registration Nos. 4483077 and 4711076 is maintained and continued.

Miscellaneous

If applicant’s attorney has questions about this application or needs further assistance, please telephone the assigned trademark examining attorney directly at the number below.

Advisory Regarding E-mail Communications

If applicant’s attorney 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. §2.191; TMEP §§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.

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 20, 2020 for

U.S. Trademark Application Serial No. 88461835

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@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).

 

 

 

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.”