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. 88558919
Mark: ECCO
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Correspondence Address: |
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Applicant: Yu,Shanshan
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Reference/Docket No. N/A
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: October 15, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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. Registration Nos. 3155456, 2331090, 1935123, 1753970, 2400426, 3099622, 3090429, 4554009, 4402266, 2467046, 1755412, 0890399, 1369274, 2725635, and 5836294. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark ECCO is for “Athletic supporters; Body-building apparatus; Body-training apparatus; Carnival masks; Dolls; Elbow guards for athletic use; Elbow pads for athletic use; Fishing tackle; Hangers for Christmas tree ornaments; Infant toys; Knee pads for athletic use; Leg guards for athletic use; Pet toys; Plush toys; Sport balls; Swimming belts; Toy cars; Toy models; Toy robots; Water toys; Wrist guards for athletic use” in International Class 28.
The registrants’ marks are as follows:
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Mark |
Registration No. |
Relevant Goods |
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ECCO |
3155456 |
“Clothing, namely, jackets, coats, overcoats, sweatshirts, shirts, shorts, pants, socks, belts, shoes, boots, sandals, slippers, insoles for footwear, and hats” in International Class 25 |
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ECCO |
2331090 |
“Footwear” in International Class 25 |
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ECCO |
1935123 |
“Footwear” in International Class 25 |
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ECCO |
1753970 |
“Casual walking shoes” in International Class 25 |
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ECCO |
2400426 |
“Retail shoe store services” in International Class 35 |
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ECCO |
3099622 |
“Retail clothing and shoe store services, excluding store services in the field of fashion accessories and rainwear” in International Class 35 |
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ECCO |
3090429 |
“Retail store services, online retail store services, and mail order services, all featuring footwear, clothing, headgear, leather goods and preparations for the care of footwear and goods of leather and skins” in International Class 35 |
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ECCO MIND |
4554009 |
“Hand bags, shoulder bags, sporrans, waist bags, rucksacks, all purpose carrying bags, sports bags and school bags for children” in International Class 18 and “Footwear, namely, boots, shoes, slippers, sandals, insoles for footwear” in International Class 25 |
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ECCOMIND |
4402266 |
“Hand bags, shoulder bags, sporrans, waist bags, rucksacks, all purpose carrying bags, sports bags and school bags for children” in International Class 18 and “Footwear, namely, boots, shoes, slippers, sandals, insoles for footwear” in International Class 25 |
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ECCO HYDROMAX |
2467046 |
“Footwear” in International Class 25 |
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ECCO WALKER |
1755412 |
“Footwear” in International Class 25 |
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ECHO |
0890399 |
“Gold clubs” in International Class 28 |
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ECHO |
1369274 |
“Toys, namely, robots convertible to vehicles, toy machine gun with sound effects and built-in microphone; and remote control and battery-operated motorcycles, racing cars, off-road jeeps, sports cars, tanks, futuristic space-type vehicles, trains, trucks, and wheelie-action cars” in International Class 28 |
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ECHO |
2725635 |
“Fishing line, fishing reels, fishing rods, and fishing poles” in International Class 28 |
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ECHO |
5836294 |
“Dolls; Dolls for playing; Play figures; Toy figures; Positionable toy figures” in International Class 28 |
The same entity owns cited registrations Nos. 3155456, 2331090, 1935123, 1753970, 2400426, 3099622, 3090429, 4554009, 4402266, 2467046, and 1755412.
Standard of Analysis for 2(d) Refusal
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 and 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 goods and 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
Reg Nos. 3155456, 2331090, 1935123, 1753970, 2400426, 3099622, and 3090429
In the present case, applicant’s mark is ECCO and registrant’s marks are ECCO (Reg. Nos. 3155456, 2331090, 1935123, 1753970, 2400426, 3099622, and 3090429). Thus, the word portion of the marks are identical in terms of 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). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services. Id.
Therefore, the marks are confusingly similar.
Reg Nos. 4554009, 4402266, 2467046, 1755412, 0890399, 1369274, 2725635, and 5836294
To reiterate from above, 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, the applied-for mark and Reg. Nos. 4554009, 4402266, 2467046, 1755412, 0890399, 1369274, 2725635, and 5836294 feature common or highly similar wording, rendering the marks similar in appearance and overall commercial impression. Namely, the applied-for mark and Reg. Nos. 4554009, 4402266, 2467046, and 1755412 feature the identical term ECCO. In addition, the applied-for mark and Reg. Nos. 0890399, 1369274, 2725635, and 5836294 feature the highly similar terms ECCO and ECHO, respectively. 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).
The inclusion of additional wording elements in Reg. Nos. 4554009, 4402266, 2467046, and 1755412 does not obviate the similarities to the applied-for mark, as the applied-for mark is wholly incorporated within that of the registered wordings. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. As such, the applied-for and registered marks create similar overall commercial impressions, as to give rise to a likelihood of consumer confusion as to whether the goods and services of the parties emanate from a common source.
The examining attorney also notes that the distinctions in appearance between the applied-for mark and Reg. Nos. 0890399, 1369274, 2725635, and 5836294 do not obviate the similarity between the marks, as the marks are identical in sound. 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).
Further, the inclusion of stylization in Reg. Nos. 2331090, 1753970, 3090429, and 4402266 does not overcome the similarity to the applied-for, standard character mark. 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”).
Moreover, the inclusion of design elements in Reg. No. 1369274 does not overcome the similarity to the applied-for, standard character mark. When evaluating a composite mark consisting of words and a design, such as Reg. No. 1369274, 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 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 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)).
For these reasons, the marks are confusingly similar.
Relatedness of the Goods and Services
Reg. No. 5836294
In the instant case, “dolls” are offered in connection with the applied-for mark and Reg. No. 5836294. The goods of the parties are therefore identical.
Reg. Nos. 1369274 and 5836294
Determining likelihood of confusion is based on the description of the goods stated in the application and registrations 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 application uses broad wording to describe “dolls,” “toy cars,” and “toy robots,” which presumably encompasses all goods of the type described, including the registrants’ more narrow “dolls for playing” (Reg. No. 1369274) and “toys, namely, robots convertible to vehicles; and remote control and battery-operated motorcycles, racing cars, off-road jeeps, sports cars, tanks, futuristic space-type vehicles, trains, trucks, and wheelie-action cars” (Reg. No. 5836294). 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 registrants’ 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 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 registrants’ goods are related.
Reg. Nos. 3155456, 2331090, 1935123, 1753970, 2400426, 3099622, 3090429, 4554009, 4402266, 2467046, 1755412, 0890399, and 2725635
In this case, applicant’s “elbow guards for athletic use,” “elbow pads for athletic use,” “fishing tackle,” “knee pads for athletic use,” “leg guards for athletic use,” “sport balls,” “athletic supporters,” and “wrist guards for athletic use” are related to the “clothing, namely, jackets, shirts, shoes,” “footwear,” “casual walking shoes,” “sports bags,” “footwear, namely, shoes,” “golf clubs,” and “fishing line, fishing reels, fishing rods, and fishing poles” offered in connection with Reg. Nos. 3155456, 2331090, 1935123, 1753970, 4554009, 4402266, 2467046, 1755412, 0890399, and 2725635. The attached Internet evidence, consisting of excerpts from the websites of third parties offering the recited goods at issue, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. See attached evidence from Nike, Under Armour, ADIDAS, Callaway, Wilson, TaylorMade, Cabela’s, Bass Pro Shops, and Berkley. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Further, in the instant case, registrant offers “retail shoe store services,” “retail clothing and shoe store services, excluding store services in the field of fashion accessories and rainwear,” and “retail store services, online retail store services, and mail order services, all featuring footwear, clothing, headgear, leather goods” in connection with Reg. Nos. 2400426, 3099622, and 3090429, as compared to applicant’s International Class 28 “elbow guards for athletic use,” “elbow pads for athletic use,” “fishing tackle,” “knee pads for athletic use,” “leg guards for athletic use,” “sport balls,” and “wrist guards for athletic use.” The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) In re Peebles, Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks for coats and for retail outlets featuring camping and mountain climbing equipment, including coats, likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”); TMEP §1207.01(a)(ii). In the instant case, registrant’s s retail store services and on-line retail store services as offered by companies in commerce specifically feature the International Class 28 goods set forth by applicant. See attached evidence from Nike, Under Armour, ADIDAS, Callaway, Wilson, TaylorMade, Cabela’s, and Bass Pro Shops. The attached Internet evidence thus establishes that the retail-store services offered by registrant feature the same type of products offered by applicant. Given the foregoing, the goods and services of the parties are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
To the extent the evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for every good. 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, which is enough to show a likelihood of confusion.
For the reasons stated above, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
U.S. LICENSED ATTORNEY REQUIRED
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
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
/Amanda Galbo/
Amanda Galbo
Trademark Examining Attorney
Law Office 125
(571) 272-5391
amanda.galbo@uspto.gov
RESPONSE GUIDANCE
