Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL OFFICE ACTION

 

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:  April 27, 2020

 

PREVIOUS OFFICE ACTION / RESPONSE:  This Office action is in response to applicant’s communication filed on March 24, 2020.

 

In a previous Office action dated September 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Section 2(d) Refusal – Likelihood of Confusion.  Applicant was also required to satisfy the following requirements: (1) Amendment Required – Identification of Goods, and (2) Multiple-Class Application Requirements, and (3) U.S. Licensed Counsel Required.

 

The trademark examining attorney notes that, based on applicant’s response, the following requirement(s) have been satisfied: (1) Amendment Required – Identification of Goods, and (2) Multiple-Class Application Requirements, and (3) U.S. Licensed Counsel Required.  See TMEP §§713.02, 714.04. 

 

SUMMARY OF ISSUES MADE FINAL:  The trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

• Section 2(d) Refusal – Likelihood of Confusion – Certain Goods in International Class 1 Only

 

 

I.                SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CERTAIN GOODS IN INTERNATIONAL CLASS 1 ONLY

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4568177.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

The Marks

 

The applied-for mark is FX, in standard characters, for in relevant part “soil amendments made from pyrolyzed biomass, namely, biochar”, “soil amendments for agricultural use, horticultural use, home gardening and landscaping use” and “charcoal for use as a soil conditioner” in International Class 1.

 

The registered mark is FX, in standard characters, for “lawn fertilizers” in International Class 1.

 

Likelihood of Confusion Analysis

 

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 parties’ goods.  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).  Any evidence of record related to those factors is considered, however “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 and differences in the marks.”); TMEP §1207.01.  Applicant has also presented arguments concerning the following, additional du Pont factors:  (1) The “similarity or dissimilarity of established, likely-to-continue channels of trade”, and (2) the “number and nature of similar marks in use on similar goods.”  In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361.  Each of these factors is addressed in the sections below.

 

Similarity of the Marks

 

The applied-for mark FX is confusingly similar to the registered mark FX, which weighs in favor of a likelihood of confusion.

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

The applied-for mark and the registered mark in this case are both FX, in standard characters.  The marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  The marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods, because they are identical.  Id.  The applied-for mark and registered mark are thus confusingly similar.

 

Additionally, where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Relatedness of the Goods

 

Applicant’s soil amendments and soil conditioners are related to registrant’s “lawn fertilizers”, which weighs in favor of a likelihood of confusion.

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  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).  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).

 

Applicant’s “soil amendments made from pyrolyzed biomass, namely, biochar”, “soil amendments for agricultural use, horticultural use, home gardening and landscaping use”, and “charcoal for use as a soil conditioner” are related to registrant’s “lawn fertilizers” because they have similar uses, namely, enriching soil and promoting plant growth.  The attached evidence from the American Heritage dictionary shows that “fertilizer” is “any of a large number of natural and synthetic materials, including manure and nitrogen, phosphorus, and potassium compounds, spread on or worked into soil to increase its capacity to support plant growth.”  The previously attached evidence from RegenerationInternational.com, Airex-Energy.com, Wikipedia.org, HomeDepot.com, Pennington.com, and MiracleGro.com, as well as the newly attached evidence from Wilbur-Ellis.com, Scotts.com, KeyToLifeGarden.com, LewisBamboo.com, and WakefieldBioChar.com, shows further that soil amendments and soil conditioners, including such goods made from or with biochar, are also used to increase soil’s capacity to support plant growth. 

 

Applicant’s “soil amendments made from pyrolyzed biomass, namely, biochar”, “soil amendments for agricultural use, horticultural use, home gardening and landscaping use”, and “charcoal for use as a soil conditioner” are also related to registrant’s “lawn fertilizers” because of the way that they are marketed and sold.  The previously attached evidence from HomeDepot.com, Pennington.com, and MiracleGro.com, as well as the newly attached evidence from Wilbur-Ellis.com, Scotts.com, KeyToLifeGarden.com, LewisBamboo.com, and WakefieldBioChar.com shows that soil amendments and soil conditioners are commonly marketed and sold from the same sources, under the same brands or marks, as “lawn fertilizers.”  Home Depot, for example, markets and sell a variety of soil amendments and fertilizers, including “law fertilizers”, all under the Vigoro brand name.  Wilbur-Ellis similarly markets and sells a variety of soil amendments and “law fertilizers”, all under the Wilbur-Ellis brand name.  Pennington also markets and sells biochar-based soil amendments, soil conditioners, lawn fertilizers, and pre-packaged mixtures of both products, all under the Pennington brand name. 

 

Applicant’s “soil amendments made from pyrolyzed biomass, namely, biochar”, “soil amendments for agricultural use, horticultural use, home gardening and landscaping use”, and “charcoal for use as a soil conditioner” are also related to registrant’s “lawn fertilizers” because they are used together.  Goods that are often used together, or otherwise purchased by the same purchasers for the same or related purposes, have generally been found to be related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).  The previously referenced evidence from WakefieldBioChar.com shows that soil amendments, soil conditions, and lawn fertilizers are commonly used together for the same purposes, e.g. enriching soil and stimulating plant growth.  The same evidence also shows that mixtures of soil amendments, soil conditioners, and lawn fertilizers are commonly sold for use together as a single, integrated product.  A home owner might, for example, apply a biochar-based soil amendment, lawn fertilizer, and/or pre-packaged mixture of both to his or her lawn to enrich the soil and promote plant growth. 

 

Applicant argues in its response that consumer confusion is unlikely in this case, because “fertilizers are not the same as soil amendments.”  The fact that the parties’ goods may differ is not, however, controlling when 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.  The previously referenced evidence from HomeDepot.com, Pennington.com, MiracleGro.com, Wilbur-Ellis.com, Scotts.com, KeyToLifeGarden.com, LewisBamboo.com, and WakefieldBioChar.com also shows that, contrary to applicant’s contentions, that applicant’s “soil amendments made from pyrolyzed biomass, namely, biochar”, “soil amendments for agricultural use, horticultural use, home gardening and landscaping use”, and “charcoal for use as a soil conditioner” are practically and commercially related to registrant’s “lawn fertilizers.”

 

Applicant’s soil amendments and soil conditioners are, in light of the foregoing, related to registrant’s “lawn fertilizers” for likelihood of confusion purposes.

 

The Similarity or Dissimilarity of Established, Likely-to-Continue Channels of Trade

 

Applicant argues in its response that the parties’ goods in this case “are not using the same channels of trade”, because applicant’s goods are “directed toward the industrial sector”, while registrant’s goods are allegedly “directed toward…gardening” and primarily “sold in hardware stores.” Applicant’s arguments are, however, not persuasive. 

 

Applicant claims that the specimen of use submitted in support of the registration shows that registrant’s goods are “directed toward…home gardening” and primarily “sold in…hardware store[s].”  A specimen of use need not, however, demonstrate a trademark owner’s every use of its mark in commerce in connection with its goods.  Registrant’s specimen of use in this case is merely one example of how it uses its mark in commerce in connection with “lawn fertilizers”, and does not limit the trade channels for those goods.  Trademark Act Section 7(b) also establishes the presumption that registrant’s use of its mark extends to all goods identified in the registration.  15 U.S.C. §1057(b).  Registrant’s goods are therefore presumed to move in all trade channels normal for such goods, and to be available to all potential classes of ordinary consumers of such goods, in the absence of limitations as to channels of trade or classes of purchasers in the registration.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).  Registrant’s goods are therefore not limited to “home gardening” uses, or to being exclusively “sold in…hardware store[s]”, and presumably occupy the same channels of trade as applicant’s goods.

 

Number and Nature of Similar Marks in Use on Similar Goods

 

Applicant argues in its response that registered mark FX “is diluted and as such has lost its ‘power’ due to the numerous trademarks [that] are using that specific term to describe the same product.”  Applicant’s argument is not persuasive, however, and is unsupported by the evidence of record. 

 

The “number and nature of similar marks used on similar goods” is considered when determining a likelihood of confusion.  In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361.  Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”  Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)). Evidence showing only limited use of similar marks with similar goods is, however, generally 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). 

 

Applicant has adduced no evidence to support its claim that the registered mark FX “is diluted and as such has lost its ‘power’ due to the numerous trademarks [that] are using that specific term to describe the same product.”  Applicant’s related claim that there are “more than 800 live trademarks using the term FX and 291 live trademarks using the term in relation to…International Class 1” also would not, even if assumed arguendo, show that the registered mark FX is “diluted”, or entitled to a scope of protection so limited as to permit applicant to register the identical mark for use in connection with highly related goods.  

 

Conclusion

 

The marks FX and FX are confusingly similar, when those marks are considered in their entireties, despite character stylization in the applied-for mark.  Applicant’s goods are also related to the goods identified in the registration.  Registration for the applied-for mark is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the mark in U.S. Registration No. 4568177.

 

 

RESPONSE GUIDELINES

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final refusal apply will be deleted from the application by Examiner’s Amendment:

 

“Soil amendments made from pyrolyzed biomass, namely, biochar; soil amendments for agricultural use, horticultural use, home gardening and landscaping use; “charcoal for use as a soil conditioner” in International Class 1.

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

“Waste water treatment substances for industrial use, namely, charcoal made from pyrolyzed biomass; Charcoal made from pyrolyzed biomass for environmental remediation purposes use;” in International Class 1.

 

“Combustible fuel pellets made from torrefied biomass, namely, biocoal” in International Class 4.

 

Applicant may respond to this final Office action 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).

 

Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

• Missing the response deadline to this letter will cause the application to abandon.  A response 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.  

 

• 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.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 27, 2020 for

U.S. Trademark Application Serial No. 88502898

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 27, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”