United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88466999
Mark: RED LION
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Correspondence Address: |
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Applicant: Great Socks, LLC
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Reference/Docket No. 644351-3004
Correspondence Email Address: |
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FINAL OFFICE ACTION
THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) MONTHS OF THE ISSUE DATE BELOW OR THE APPLICATION WILL BE ABANDONED. RESPOND USING THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) AND/OR ELECTRONIC SYSTEM FOR TRADEMARK TRIALS AND APPEALS (ESTTA). A LINK TO THE APPROPRIATE TEAS RESPONSE FORM AND/OR TO ESTTA FOR AN APPEAL APPEARS AT THE END OF THIS OFFICE ACTION.
Issue date: March 23, 2020
This Office action concerns applicant’s response filed on March 4, 2020.
The trademark examining attorney notes that the following requirement have been satisfied: the identifications have been amended. See TMEP §§713.02, 714.04.
This application was refused registration on the ground that the applied-for mark is likely to be confused with the mark RED LION WEAR in U.S. Registration No. 5226423. Applicant’s arguments to the contrary have been considered and found unpersuasive. As such, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to the cited registration. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the goods and services and similarity of the marks. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq. Based on these factors, the examining attorney maintains that there is a likelihood of confusion between applicant’s applied-for mark RED LION [and design] for “Compression sleeves” in International Class 10, “Clothing, namely, socks, sleeves worn separate and apart from clothing tops, and wristbands” in International Class 25, “Armbands” in International Class 26, and “On-line retail store services featuring socks, sleeves, armbands, and wristbands” in International Class 35, and registrant’s mark:
COMPARISON OF THE GOODS AND SERVICES
As was noted in the previous Office action, registrant’s “footwear” is considered legally identical to applicant’s “socks.” Moreover, it was demonstrated that a single entity may provide socks, wristbands, shirts, pants, and hats and caps. It was also noted that applicant’s and registrant’s clothing items are likely to travel in the same trade channels to the same consumers.
The following evidence demonstrates that a single entity may also provide compression sleeves in addition to the goods registrant offers:
· http://www.2xu.com/us/men/compression/arm-and-leg-sleeves/?lang=en_US (compression sleeves)
· http://www.2xu.com/us/men/tops/long-sleeve/?lang=en_US (shirts)
· http://www.2xu.com/us/men/bottoms/pants/?lang=en_US (pants)
· http://www.2xu.com/us/men/tops/jackets-and-vests/?lang=en_US (jackets)
· http://eliteathleticgear.com/collections/arm-sleeves (compression sleeves)
· http://eliteathleticgear.com/collections/slides-flips-flops (footwear)
· http://eliteathleticgear.com/collections/snapbacks (hats)
· http://www.evoshield.com/en-us/compression?apparel_type_baseball=7216 (compression sleeves)
· http://www.evoshield.com/en-us/apparel/mens/long-sleeve-shirts (shirts)
· http://www.evoshield.com/en-us/apparel/adult-evoshield-pro-team-fleece-pants (pants)
· http://www.evoshield.com/en-us/apparel/mens/jackets (jackets)
· http://www.evoshield.com/en-us/hats (hats)
· http://www.tommiecopper.com/men/sleeves (compression sleeves)
· http://www.tommiecopper.com/men/tops (shirts)
Indeed, registrant offers “athletic apparel,” and compression sleeves offer many benefits to athletes. See, e.g., Pro Compression, 5 Benefits of Compressions Sleeves Every Athlete Should Know, http://procompression.com/blogs/articles/5-benefits-of-compression-sleeves-for-athletes. Thus, applicant’s and registrant’s goods could be marketed to the same purchasers, namely, athletes.
Finally, evidence in the nature of third-party registrations was attached to the previous Office action demonstrating that a single entity may provide both registrant’s goods and retail store services, and the internet evidence attached to this and the previous Office action demonstrates that an entity offering applicant’s and registrant’s goods may sell those goods online. This indicates that a single entity may provide both on-line retail store services and applicant’s and registrant’s goods.
As such, consumer confusion as to the source or sponsorship of the goods and services being provided is likely since applicant’s goods and services are closely related to the registrant’s goods.
COMPARISON OF THE MARKS
Because applicant’s goods and services are closely related if not identical to the registrant’s goods, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b).
It is noted that the marks consist of both wording and design elements. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Turning now to the wording in the marks, both the applied-for mark and the registered mark contain the wording “RED LION”.
In addition, the wording “RED LION” forms the first part of the registered mark, and consumers are generally more inclined to focus on the first part of a mark. See 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”).
The fact that applicant has deleted the word “WEAR” from the registered mark will not prevent a finding that the marks are confusingly similar. As noted in the previous Office action, the word “wear” refers to “clothing,” and thus the word “WEAR” in the registered mark is generic with no source-identifying significance. Indeed, registrant disclaimed the word “WEAR”, and 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). Thus, the word “WEAR” in the registered mark does not significantly affect the commercial impression created by the wording “RED LION”.
Accordingly, the wording “RED LION” forms the dominant element of the respective marks.
Applicant argues that the marks, when compared side-by-side, are different in overall appearance. While this is true, 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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). Here, the average purchaser with a general impression of the marks is likely to remember an entity using the arbitrary wording “RED LION” in connection with clothing items and not the specific differences between the marks. This is especially true given that goods of applicant’s and registrant’s type, as demonstrated by the internet evidence attached to this and the previous Office action, are relatively inexpensive. Thus, applicant’s and registrant’s clothing items “would not be purchased with a great deal of care or require purchaser sophistication, which increases the likelihood of confusion.” Brown Shoe Co., Inc. v. Robbins, 90 USPQ2d 1752, 1755 (TTAB 2009) (citing Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)).
As such, the marks are confusingly similar because they contain the identical, dominant wording “RED LION”.
CONCLUSION
Because applicant’s goods and services are closely related if not identical to the registrant’s goods, because the marks contain the identical, dominant wording “RED LION”, the applied-for mark must be refused registration based on a likelihood of confusion. Any doubt regarding this likelihood of confusion determination is resolved in favor of the registrant. 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).
This refusal is now made FINAL.
RESPONSE OPTIONS
Applicant must respond to this final refusal within six (6) months of the issue date of this Office action or the application will abandon.
A response to this Office action (called a “request for reconsideration”) would provide any additional written arguments and evidence applicant deems relevant as to why the marks are not likely to be confused.
Applicant may also appeal this final Office action to the Trademark Trial and Appeal Board (TTAB).
Click to file a request for reconsideration of this final Office action that fully resolves all outstanding issues and/or click to file a timely appeal to the TTAB with the required filing fee(s).
A request for reconsideration 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.
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
RESPONSE GUIDANCE
Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.
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.
USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form. Current TEAS RF applicants will generally need to continue to meet similar application requirements. See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7). In addition, current TEAS Regular applicants must now provide an email address when submitting documents through TEAS and will generally be sent correspondence electronically from the USPTO. For more information about these changes, see the Mandatory Electronic Filing webpage.
If needed, find contact information for the supervisor of the office or unit listed in the signature block.
