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. 88546564
Mark: GEKO
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Correspondence Address: JERALD E. NAGAE, REG. NO. 29,418 CHRISTENSEN O'CONNOR JOHNSON KINDNESS
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Applicant: UTOPIA TACKLE s.r.l.
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Reference/Docket No. JNBL-2-59342
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.
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.
Summary of Issues Applicant Must Address
(1) Refusal under Trademark Act Section 2(d) – Likelihood of Confusion;
(2) Requirement to Amend Mark Description;
(3) Requirement to Amend Identification of Goods (Classes 25 and 28); and
(4) Requirement to Clarify Foreign Registration Expiration Date
Refusal - Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1510173, 1512691, 1514657, 1786819, 1903602, 2260689, 2347417, 3795805, 4113954 and 4928794. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrants. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
A. Comparison of Marks
Applicant’s mark GEKO is highly similar to the registered marks GECKO, GECKO, GECKO, GECKO, GECKO, GEKKO, MAUI GECKO, GECKO HAWAII, GECKO GIRL and GECKO-TAC in sound, appearance and commercial impression.
Regarding the registered GECKO and GEKKO marks, the only practical differences between the applied-for mark and registered marks are the additional silent letters “C” and “K” in the middle of the registered marks. However, minor changes in words are insufficient alone to distinguish marks. Therefore, these minor differences do not alter the commercial impressions of the marks sufficiently to obviate the likelihood of confusion.
As for the registered marks MAUI GECKO, GECKO HAWAII, GECKO GIRL and GECKO-TAC, 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
In the present case, the word “GECKO” in the registered marks is nearly identical to the word “GEKO” in the proposed mark. This word also comprises the dominant portion of the registered marks GECKO HAWAII, GECKO GIRL and GECKO-TAC as consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark. 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); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Moreover, the word “GECKO” is the dominant portion of the registered marks MAUI GECKO, GECKO HAWAII, GECKO GIRL and GECKO-TAC as the words “MAUI”, “HAWAII”, “GIRL” and “TAC” are primarily geographically descriptive and descriptive in relation to the goods. In this regard, although marks are compared in their entireties, disclaimed matter that is descriptive of or generic for a party’s goods is less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). As such, the respective marks create similar overall commercial impressions.
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).
Furthermore, although applicant’s mark contains design elements, when evaluating a composite mark consisting of words and a design, the word portion is 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. 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 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)).
What’s more, with regard to the registered marks GECKO (first and sixth cited registrations), GEKKO, MAUI GECKO, GECKO HAWAII, GECKO GIRL and GECKO-TAC, where the goods of an applicant and registrants are “similar in kind and/or closely related,” 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. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
B. Comparison of Goods
Applicant’s “fishing tackle pliers”, “fishing knives”, “cases for fishing tackle pliers”, “harpoons for commercial fishing, not sports articles”, “cases for fishing knives”, “clothing especially made for fishing”, “footwear for fishing”, “boots for fishing”, “headwear for fishing”, “protective clothing for fishing”, “fishing equipment, namely, artificial fishing bait, fish hooks, fishing gaffs”, “rods for fishing”, “fishing rod blanks”, “fishing rod handles”, “fishing rod rests”, “fishing rod cases”, “fishing rod rests”, “clips for transporting and storing fishing rods”, “floats for fishing”, “artificial fishing flies”, “fishing leaders”, “fish bite alarm and strike indicators”, “lines for fishing”, “fishing clips”, “fishing hooks”, “fishing weights”, “fishing carabiners”, “bags specially adapted for fishing”, “fishing tackle bags”, “fishing tackle boxes”, “landing nets for anglers”, “spears for use in fishing”, “fishing tippets”, “fishing harnesses”, “audible indicating apparatus for use in fishing”, “paternoster rigs for fishing”, “fishing fly boxes”, “scuba equipment, namely, spearfishing harpoon guns”, “line casts for fly fishing”, “accessories for fishing tackle”, “tubular collars for protecting the head and neck as sporting articles” and “elastic stretch bands for personal use in sport” are identical and closely related to the registrants’ “fishing knives”, “knives”, “multi-function hand tools comprised of screwdrivers, knives, can openers, file, pliers”, “sport knives”, “filleting knives”, “fixed blade knives”, “folding knives”, “hunting knives”, “knife sharpeners”, “knife sheaths”, “knives for hobby use”, “pocket knives”, “side arms, not including firearms, namely, hunting knives”, “working knives”, “clothing, namely shirts, dresses, sweatsuits, hats, shorts, skirts and shoes”, “clothing, namely, shirts, sweatshirts, sweatsuits, shorts, pants, dresses, skirts, headwear and shoes”, “clothing, namely, pajamas”, “sunglasses”, “eyeglasses”, “eyeglass cases”, “eyeglass straps to attach to eyeglasses”, “grips for sporting articles, namely, handle grips for sporting equipment”, “textile tote bags and duffle bags” and “sporting goods, namely, snowboards, surfboards, skateboards” because they are fishing knives, pliers, spears and cases therefor, clothing, protective clothing, footwear and headwear, including those for fishing, handle grips for sports equipment, including handles for fishing rods and common bags and sporting articles likely to travel through the same channels of trade to the same class of purchasers. For example, the goods are likely to be sold together in retail knife, sporting goods, clothing, camping and outdoor/fishing supply stores and advertised together in knife, sporting goods, clothing, camping and outdoor/fishing supply catalogs, directories and trade publications.
Furthermore, with respect to applicant’s and registrants’ goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registrations at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identifications set forth in the application and registrations have no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade and are available to the same class of purchasers.
Further, the registrations use broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including (1) a variety of knives, pliers and cutlery for fishing, (2) clothing in the nature of shirts, shorts, pants, headwear and shoes especially made for fishing, (3) protective eyeglasses and sunglasses for fishing and (4) grips for sporting articles in the nature of handle grips for fishing rods, which are identical to the applicant’s goods.
Similarly, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including (1) clothing especially made for fishing in the nature of shirts, shorts, pants and headwear, (2) footwear for fishing in the nature of shoes, (3) headwear for fishing in the nature of hats and (4) protective clothing for fishing in the nature of eyeglasses and sunglasses, which are identical to the registrants’ goods.
In further support of the relationship between the goods of the parties, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of thirty-eight third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely, (1) pajamas and fishing clothes, (2) tote/duffle bags and bags for sports/fishing and (3) fishing equipment/supplies and snowboards, surfboards and skateboards, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
What’s more, with regard to the “pajamas”, “textile tote bags and duffle bags” and “sporting goods, namely, snowboards, surfboards [and] skateboards” associated with the registered GECKO marks (second, fifth and seventh cited registrations), where the marks of the respective parties are highly similar, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).
Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrants from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrants. 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).
Based on the foregoing remarks, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Applicant should also note the following potential refusal.
Prior Pending Applications
The following potential refusal only applies to Class 25 and “audible indicating apparatus for use in fishing” in Class 28.
The filing dates of pending Application Serial Nos. 87303055 and 88293309 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
Although applicant’s mark has been refused registration, applicant may respond to the refusal and potential refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal and potential refusal, applicant must also respond to the requirements set forth below.
Applicant must revise the mark description of record by referencing the black partial outlining around the word “GEKO” and harpoon design in the applied-for mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the word “GEKO” in light green stylized font partially outlined in black whereby the letter “G” incorporates a fish hook design in the lower section thereof and the letter “O” features a black eyeball design therein, all displayed above a black harpoon design and six small rectangles shown in black alongside the same.
The following requirement only applies to specified goods in Classes 25 and 28.
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
In addition, the wording “fishing rod rests”, “clips for transporting and storing fishing rods”, “fishing clips”, “fishing carabiners”, “bags specially adapted for fishing”, “audible indicating apparatus for use in fishing”, “paternoster rigs for fishing”, “line casts for fly fishing”, “accessories for fishing tackle”, “tubular collars for protecting the head and neck as sporting articles” and “elastic stretch bands for personal use in sport” in the identification of goods in Class 28 is indefinite and must be amended to clarify the nature of the goods intended to be associated with the applied-for mark, as noted below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
The applicant may adopt any or all of the following descriptions, if accurate:
“Metal clips for general use, namely, metal clips for fastening fishing rods during transportation and storage; metal clips for general use, namely, metal clips for fastening fishing equipment; metal hardware for fishing, namely, carabiners of metal”, in International Class 6;
“Fishing tackle pliers; fishing knives; cases for fishing tackle pliers; harpoons for commercial fishing, not sports articles; cases for fishing knives”, in International Class 8;
“Protective clothing for fishing, namely, [indicate Class 9 goods, e.g., protective eyewear and reflective clothing for the prevention of accidents]; audible indicating apparatus, namely, sound transmitting apparatus for use while fishing”, in International Class 9;
“Non-metal clips for general use, namely, non-metal clips for fastening fishing rods during transportation and storage; non-metal clips for general use, namely, non-metal clips for fastening fishing equipment; non-metal hardware for fishing, namely, carabiners of plastic”, in International Class 20;
“Clothing especially made for fishing, namely, [indicate Class 25 goods, e.g., fishing vests, fishing jackets, fishing shirts and fishing waders]; footwear for fishing; boots for fishing; headwear for fishing; protective clothing for fishing, namely, [indicate Class 25 goods, e.g., sun protective clothing in the nature of shirts, pants and vests]”, in International Class 25; and/or
“Fishing equipment, namely, artificial fishing bait, fish hooks and fishing gaffs; rods for fishing; fishing rod blanks; fishing rod handles; fishing rod rests, namely, stands specially adapted for holding fishing rods; fishing rod cases; floats for fishing; artificial fishing flies; fishing leaders; fish bite alarm and strike indicators; lines for fishing; fishing clips in the nature of clamps for securing fishing equipment on body and fishing clamps for use in holding fish to remove fish hooks; fishing hooks; fishing weights; leader organizers, namely, bags specially adapted for fishing leaders; bags specially adapted for fishing rods; fishing tackle bags; fishing tackle boxes; landing nets for anglers; spears for use in fishing; fishing tippets; fishing harnesses; paternoster rigs being fishing equipment comprised of fishing leaders, fishing hooks and fishing weights; fishing fly boxes; scuba equipment, namely, spearfishing harpoon guns; line casts being fishing lines for fly fishing; accessories for fishing tackle, namely, fishing tackle containers, fishing tackle boxes and fishing tackle bags; sports articles, namely, tubular protective supports for necks; elastic stretch bands for personal use in sport, namely, stretch bands used for physical fitness purposes”, in International Class 28.
TMEP §1402.11.
For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Furthermore, any goods deleted by amendment may not be reinserted at a later point in prosecution. TMEP §1402.01(e).
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least six classes; however, applicant submitted a fee(s) sufficient for only three classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Foreign Registration Expiration Date
Applicant indicated that its foreign registration will expire on July 6, 2029. However, inasmuch as European Union trademarks are registered for a period of 10 years running from the date of filing (in this case, February 13, 2019), applicant must clarify the foreign registration expiration date for the record. See TMEP Appendix B.
Upon information and belief, applicant’s foreign registration will expire on February 13, 2029, ten years from the filing date of February 13, 2019.
Miscellaneous
If applicant’s attorney has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Advisory Regarding E-mail Communications
If applicant’s attorney has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action
/David Yontef/
Trademark Examining Attorney
Law Office 118
(571) 272-8274
david.yontef@uspto.gov
RESPONSE GUIDANCE
