To: | CTECH HOLDINGS LLC (randi@rghlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88491852 - KINGPIN - N/A |
Sent: | September 23, 2019 02:53:08 PM |
Sent As: | ecom114@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 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88491852
Mark: KINGPIN
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Correspondence Address: THE LAW OFFICE OF RANDI HERMIZ, PLC 3250 W. BIG BEAVER ROAD, SUITE 308
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Applicant: CTECH HOLDINGS LLC
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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: September 23, 2019
How to respond. Click to file a response to this nonfinal Office action
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
- Section 2(d) Refusal – Likelihood of Confusion Limited as to International Classes 003, 009, 025 and 034
o Prior Filed Pending Applications
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
LIMITED AS TO INTERNATIONAL CLASSES 003, 009, 025, 034
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 and/or services. 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).
The applicant has applied to register the mark KINGPIN for, in relevant part:
IC 003: Electronic cigarette liquid (e-liquid) comprised of essential oils
IC 009: Electronic cigarette batteries; Batteries for electronic cigarettes; Chargers for electronic cigarettes; Electric coils for electronic cigarettes
IC 025: T-shirts; T-shirts for Adults; Graphic T-shirts; Short-sleeved or long-sleeved t-shirts
IC 034: Electronic cigarette atomizers sold empty; Electronic cigarette boxes; Electronic cigarette cases; Electronic cigarette holders; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of propylene glycol; Electronic cigarette liquid (e-liquid) comprised of vegetable glycerin; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes and oral vaporizers for smokers; Electronic cigarettes for use as an alternative to traditional cigarettes; Boxes for electronic cigarettes and electronic cigarette accessories; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Cartridges sold filled with propylene glycol for electronic cigarettes; Cartridges sold filled with vegetable glycerin for electronic cigarettes; Cases for electronic cigarettes and electronic cigarette accessories; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Electric cigarettes; Flavorings, other than essential oils, for use in electronic cigarettes; Flavourings, other than essential oils, for use in electronic cigarettes; Liquid nicotine solutions for use in electronic cigarettes
The registered marks are:
KINGPIN (U.S. Registration No. 2874945) for “Tobacco in the form of leaves [, Cigarette Rolling Papers, Cigars ] [, Cigarettes ]”
KINGPIN (U.S. Registration No. 4618350) for “ IC 030: [ Chemical flavorings for the preparation of tobacco, namely, cigarette tobacco, chewing tobacco and snuff; ] Chemical flavorings in liquid form used to refill electronic cigarette cartridges; IC 034: [ Cigar boxes not of precious metal; Cigar humidifiers; ] Electronic cigarettes; Electronic cigars
KINGPIN (U.S. Registration No. 5751418) for “Cigar rollers”
KINGPIN SUITE PALMS · LAS VEGAS and design (U.S. Registration No. 4050091) for “Clothing, namely, [aprons, ascots, athletic footwear, athletic shoes, ]athletic uniforms, [bandanas, ]baseball caps, [bath slippers, bathing caps, bathing suits, bathing trunks, bathrobes, beach cover-ups, beach shoes, ]beachwear, beanies, [belts, berets, ]Bermuda shorts, bikinis, [blazers, blouses, body shapers, body suits, ]boxer shorts, [bras, brassieres, ]briefs, camp shirts, caps, cardigans, [chef's hats, ]wrap-arounds, coats, [collars, ]crop tops, [cuffs, ]denim jackets, [ear muffs, ]golf shirts, gym shorts, halter tops, hats, head bands, headwear, [infant wear, ]jackets, jeans, jogging suits, [leather jackets, leg warmers, ]leggings, light-reflecting jackets, [lingerie, ]lounge wear, [mock turtle-neck sweaters, money belts, mufflers, ]neck bands, neckwear, night shirts, pajamas, panties, pants, polo shirts, ponchos, pullovers, rain jackets, [sandals, ]sashes, scarves, shawls, shirts, [shoes, ]shorts, sleep shirts, sleepwear, slippers, [sneakers, ]socks, [sport coats, sport shirts, ]sun visors, sweat bands, sweat pants, sweat shirts, sweat shorts, sweat suits, [sweaters, ]sweatsocks, [swim caps, ]swim trunks, swim wear, [swimming caps, ]swimsuits, tank tops, t-shirts, visors, [v-neck sweaters, ]wind resistant jackets, wrist bands, and wristbands containing a cooling substance to cool the wearer offered for sale exclusively at the Palms hotel gift shop located in Las Vegas, Nevada”
KINGPINS SHOW and design (U.S. Registration No. 4272181) for, in part, “Clothing, namely, t-shirts”
The examining attorney acknowledges the additional wording, SUITE PALMS · LAS VEGAS, and SHOW in U.S. Registration Nos. 4050091 and 4272181, however, the first term in the marks create the stronger reaction and commercial impression. 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”).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In addition, the examining attorney acknowledges the design elements in U.S. Registration Nos. 4050091 and 4272181, however, 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, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. 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)).
The marks, in the instant case, create the same mental reaction and overall commercial impression. 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).
The Goods
In the instant case, the parties have highly related tobacco and electronic cigarette products, and highly related articles of clothing such that the goods would be marketed in the same channels of trade.
- TOBACCO & VAPE KING - tobacco and electronic cigarettes and accessories
http://www.tobaccoandvapekings.com/
- TOBACCO HUT - tobacco and electronic cigarettes and accessories
http://www.tobaccohutandvape.com/
- J.CREW – variety of clothing
http://www.jcrew.com/r/shopall/men/clothing
- L.L.BEAN – variety of clothing
http://www.llbean.com/llb/shop/27?page=womens&csp=f&nav=gnro-hp
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).
The marks are highly similar. The tobacco and electronic cigarette products, and the clothing articles are very highly related. The similarities among the marks and the goods are so great as to be marketed in the same channels of trade and create a likelihood of confusion among consumers.
Accordingly, registration is refused under Section 2(d) of the Trademark Act as to International Classes 003, 009, 025 and 034.
PRIOR FILED PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
PARTIAL REQUIREMENT – POTENTIAL ABANDONMENT
ASSISTANCE
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
RESPONSE GUIDANCE