To: | Unison (ajohnson@dogwood-law.com) |
Subject: | U.S. Trademark Application Serial No. 88555979 - TANDEM - 121/2 TM |
Sent: | February 25, 2020 09:36:47 AM |
Sent As: | ecom112@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88555979
Mark: TANDEM
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Correspondence Address: DOGWOOD PATENT AND TRADEMARK LAW
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Applicant: Unison
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Reference/Docket No. 121/2 TM
Correspondence Email Address: |
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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: February 25, 2020
This Office action responds to applicant’s communication filed on January 27, 2020
In a previous Office action(s) dated January 27, 2020, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d). Further, the examining attorney considered the applicant’s arguments carefully but has found them unpersuasive. Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.64(a); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Similarity of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. 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 applicant is attempting to register the mark TANDEM and the registered mark is TANDEM + NANO. The marks are greatly similar in sound, appearance, connotation and overall commercial impression because the marks share the same term TANDEM. The additional term in each mark does not overcome a likelihood of confusion because both TANDEM carry a similar connotation and overall commercial impression. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s goods.
The common term TANDEM is the dominant feature of the registrant’s marks because it is the first term. 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”).
The marks at issue create a similar commercial impression because they share the same part “TANDEM”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce , 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n , 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works , 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp. , 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods and/or services despite some differences.
Similarity of the Goods and/or Services
The applicant is attempting to register TANDEM for “Deodorants for personal use, shampoo, bath soaps, toothpaste” in Class 3. The registered mark is TANDEM + NANO for “Soap” in Class 5.
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co. , 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc , 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registration uses broad wording to describe soap, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “bath soaps”. 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) . Thus, applicant’s and registrant’s goods are legally identical. See, e.g. , In re i.am.symbolic, llc , 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc. , 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC , 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd. , 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods and/or services are related.
The trademark examining attorney refers to the attached Internet evidence and previously evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely soap, toothpaste, shampoo and deodorants, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co. , 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp . , 60 USPQ2d 1214, 1217-18 (TTAB 2001); 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).
Accordingly, contemporaneous use of the marks sharing the wording TANDEM by different parties with the identified goods is likely to lead to consumer confusion or mistake as to the source of the goods
Applicant’s Arguments
Applicant contends that there is no likelihood of confusion because the marks are not the same, and because they have different commercial impressions. In addition, applicant argues that the cumulative differences are great and negate the likelihood of confusion. Applicant does not dispute the relatedness and similarity of the goods at issue. The contentions are not persuasive.
Applicant contends the marks are different because the overall impression is different with the addition of the plus sign and the term “NANO” in the registered mark. Applicant also contends any commonality created by the shared term is expunged because of the additional wording in the registered mark. These contentions are unpersuasive because although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea , 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp. , 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea , 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l , 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Further, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n , 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc. , 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Deleting “+ NANO” from the registered mark creates a slightly different sound, however because the first term of the registered mark is shared by the entire applied-for mark, the marks at issue share identical parts, sounds, appearance and meaning. This similarity in sound alone may be sufficient to support a finding that the marks at issue are likely to cause consumer mistake.
Applicant contends the consumers for the goods at issue purchase with personal care for items in Class 3 and are thus sophisticated purchasers that are brand-conscious. This contention is unpersuasive because the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Additionally, applicant contends the Trademark Office routinely registered marks featuring the term TANDEM because there is one additional registration for hair preparations featuring the term TANDEM. Applicant claims that the cited registration does not support a likelihood of confusion because this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. Even if considered, the third-party registrations are not persuasive. The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).
Evidence of weakness or dilution consisting solely of one registration referenced by applicant, is generally entitled to little weight in determining the strength of a mark, because such registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982). Additionally, the co-existence of the registrations on the Federal Register even though owned by different registrants means that consumers can distinguish between the attached registrations because each mark includes additional source identifying matter, such as the wording “TEXTURE” which is capable of distinguishing it from the other co-existing marks. The applicant’s mark does not include additional source identifying words like those found in the co-existing registrations.
Accordingly, after careful consideration of applicant’s response, the refusal under Section 2(d) is maintained and made FINAL.
RESPONSE GUIDELINES
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 response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Kamal Bal/
Kamal S. Bal
Examining Attorney
Law Office 112
571-272-5645
kamal.bal@uspto.gov
RESPONSE GUIDANCE