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. 88500652
Mark: MAXXPRO
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Correspondence Address: 2100 Palomar Airport Rd Ste 214-29 |
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Applicant: XIAMEN HENG RONG YI MAO YI YOU XIAN GONG ETC.
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Reference/Docket No. MAXX-001
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) 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: November 04, 2019
This Office action is in response to applicant’s communication filed on October 7, 2019.
In a previous Office action(s) dated September 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): retain U.S.-licensed counsel.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) has/have been satisfied: U.S.-licensed counsel has been retained. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registrations Nos. 2825167 and 2834488. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Applicant has applied to register the mark MAXXPRO for use in connection with “Automatic firearm ammunition belts; Belts adapted for ammunition; Cartridge belt filling machines; Cartridge cases; Cartridge fillers; Cartridge pouches; Cleaning brushes for firearms; Gun belts; Gunstock recoil pads; Gunstocks; Hand gun accessories, namely, belt clips for securing a gun without the use of a holster; Holsters; Hunting firearms; Shoulder straps for weapons; Sighting mirrors for guns; Sighting mirrors for rifles; Sights, other than telescopic sights, for firearms; Sprays for personal defense purposes; Tripods and stands for firearms; Noise suppressors for guns; Pistol holsters” in Class 13.
The cited U.S. Registration No. 2825167 is PROMAX for “Containers for storage and transport of items used by outdoorspeople, namely, firearm cases” in Class 13.
The cited U.S. Registration No. 2834488 is PROMAX with design elements for “Containers for storage and transport of items used by outdoorspeople, namely, firearm cases” in Class 13.
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).
In this case, applicant’s MAXXPRO is confusingly similar to registrant’s PROMAX and PROMAX with design elements since the marks share an overall similar appearance, meaning, and sound. Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions. TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil). Here, both applicant’s mark and registrant’s marks appear and sound similar because they are composed of the words MAX and PRO, wherein applicant’s mark merely has an extra “X” at the end of MAX, forming MAXXPRO, and registrant’s marks are the transposition, PROMAX. No new meaning is created from the transposition of the terms, and thus have a similar commercial impression. Thus, the marks are confusingly similar.
Regarding Registration No. 2834488, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Here, because applicant’s mark is in standard characters, it can be displayed in a similar manner as registrant’s mark.
As such, considered in their entireties and in light of similarity in appearance, sound, connotation, and commercial impression, applicant’s mark and registrants’ marks are confusingly similar pursuant to Section 2(d) of the Trademark Act.
Comparison of the Goods
To the extent the evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for all goods. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified items, including items being legally identical, which is enough to show a likelihood of confusion.
Applicant’s Arguments
Applicant argues that the marks are different because applicant’s mark begins with the wording MAX, while registrant’s marks begin with the wording PRO. However, as stated above, confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions. Here, no new meaning is created from the transposition of the terms in applicant’s mark and registrant’s marks, and thus the marks have a similar commercial impression. Therefore, applicant’s arguments are unpersuasive.
Applicant also argues that the marks are different because applicant uses the spelling MAXX while registrant uses the spelling MAX. However, these parts of 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). The addition of the extra “X” in applicant’s marks does not obviate the similarity in the marks. Therefore, applicant’s arguments are unpersuasive.
Regarding the relatedness of the goods, applicant argues that its amended identification of goods removed “Bags specially adapted to hold rifles; Gun cases; Rifle cases; Weapon cases for firearms” in order to avoid the refusal, as none of applicant’s goods now overlap with registrant’s goods. However, the fact that the goods of the parties 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. As stated above, the compared goods need not be identical or even competitive to find a likelihood of confusion. 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] 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). Therefore, applicant’s arguments are unpersuasive.
Applicant further argues that the goods travel in different channels of trade, stating that firearm cases are located in a different section from applicant’s goods. However, in applicant’s attached evidence from Cabela’s, applicant’s goods and registrant’s goods do both fall under the same section, in the “Shooting” section, thus consumers would be accustomed to seeing these goods near each other. Additionally, as stated above and shown by the attached evidence, specialty firearm-related stores sell both applicant’s goods and registrant’s goods. Furthermore, as stated above and shown by the attached evidence, the same manufacturer produces both applicant’s goods and registrant’s goods. Finally, as stated above, the compared goods need not be identical or even competitive to find a likelihood of confusion. Therefore, applicant’s arguments are unpersuasive.
Finally, applicant argues that there is a vast number of registered marks that include wording PRO or MAX in the firearm field, and thus registrant’s mark is afforded a smaller scope of protection. However, applicant’s evidence only shows uses of the wording PRO independently, and not a PRO and MAX combination. Only two currently registered marks use the wording PRO and MAX for use with firearm-related goods – the two cited marks. Therefore, applicant’s arguments are unpersuasive.
Conclusion
Therefore, the marks are confusingly similar and the goods are highly related. For these reasons, the refusal under Section 2(d) of the Trademark Act is made final because a likelihood of confusion exists between applicant’s mark and U.S. Registration Nos. 2825167 and 2834488.
RESPONSE GUIDELINES AND ABANDONMENT ADVISORY
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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. 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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Derek van den Abeelen/
Examining Attorney
Law Office 126
(571) 270-3997
derek.vandenabeelen@uspto.gov
RESPONSE GUIDANCE
