To: | Forward Air Royalty, LLC (trademarks@carltonfields.com) |
Subject: | U.S. Trademark Application Serial No. 88491904 - FORWARD - 07250 |
Sent: | September 18, 2019 05:43:36 PM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88491904
Mark: FORWARD
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Correspondence Address: |
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Applicant: Forward Air Royalty, LLC
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Reference/Docket No. 07250
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 18, 2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 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 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.
Applicant has applied to register the mark FORWARD with a design for “Transportation and delivery services by air, road, rail and sea; warehousing; supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck; freight brokerage” in Class 39.
The mark in Registration No. 3508249 is LUGGAGE FORWARD in standard characters for “Shipping and delivery services, namely, pickup, transportation, and delivery of equipment, baggage, and packages by various modes of transportation” in Class 39.
The mark in Registration No. 4540950 is FORWARD FREIGHT in standard characters for “Freight and transport brokerage; Freight brokerage; Freight forwarding; Freight forwarding services; Freight transportation brokerage; Global transportation of freight for others by all available means” in Class 39.
The mark in Registration No. 4568395 is FORWARD RELOCATION in standard characters for “Moving and relocation services, namely, planning and implementing moves of homes and offices; Moving and relocation services, namely, planning and implementing moves of homes for others; Moving and relocation services, namely, planning and project oversight of home moving for others; Personnel relocation” in Class 39.
The registered marks in Reg. Nos. 4540950 and 4568395 have the same owner.
Similarity 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).
Applicant’s mark FORWARD is confusingly similar to registrants’ marks LUGGAGE FORWARD in Reg. No. 3508249, FORWARD FREIGHT in Reg. No. 4540950, and FORWARD RELOCATION in Reg. No. 4568395. Specifically, FORWARD is identical in sound, appearance, and meaning to the term FORWARD in each registered mark. Accordingly, the marks in their entireties convey similar commercial impressions of going onward so as to make progress. See http://www.lexico.com/en/definition/forward.
Moreover, the remaining terms of the registered marks LUGGAGE in Reg. No. 3508249, RELOCATION in Reg. No. 4568395, and FREIGHT in Reg. No. 4540950 do not obviate these similarities. 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). Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). Further, disclaimed matter that is descriptive of or generic for a party’s services 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). Here, the terms LUGGAGE in Reg. No. 3508249, RELOCATION in Reg. No. 4568395, and FREIGHT in Registration No. 4540950 have been disclaimed, rendering the term FORWARD more important in affecting the commercial impression.
Further, 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 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)). Here, in applicant’s mark, the road and circle design are insignificant and do not create a commercial impression separate from the wording; in fact, they reinforce the impression of going onward. Therefore, purchasers will focus on the wording in applicant’s mark.
Thus, the marks are confusingly similar.
Relatedness of the Services
In this case, the services in the application and Reg. No. 4540950 are identical. Both applicant and registrant include the following items in their respective identifications: “freight brokerage.” Further, the registrant in Reg. No. 4540950 uses broad wording to describe “Global transportation of freight for others by all available means,” which presumably encompasses all services of the type described, including applicant’s more narrow “Transportation and delivery services by air, road, rail and sea” and “supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck.” 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). Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
In addition, the registrant in Reg. No. 4568395 uses broad wording to describe “Transportation and storage of goods,” which presumably encompasses all services of the type described, including applicant’s more narrow “Transportation and delivery services by air, road, rail and sea; warehousing; supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck; freight brokerage.” Thus, applicant’s and registrant’s services are related.
Further, the registrant in Reg. No. 3508249 uses broad wording to describe “Shipping and delivery services, namely, pickup, transportation, and
delivery of equipment, baggage, and packages by various modes of transportation,” which encompasses applicant’s more narrow “Transportation and delivery services by air, road, rail and sea” and
supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck; freight brokerage.” Thus, applicant’s and registrant’s services are related.
In summary, the marks are confusingly similar and the services are related. Accordingly, purchasers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should also note the following advisory.
PRIOR-PENDING APPLICATION ADVISORY
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 mark in the referenced application. 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.
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 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
/Christopher J Nodes/
Christopher J Nodes
Examining Attorney
Law Office 116
(571) 272-5220
christopher.nodes@uspto.gov
RESPONSE GUIDANCE