| To: | Hajoca Corporation (scott@sisunlaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88577254 - VODOX - N/A |
| Sent: | December 17, 2019 07:22:59 PM |
| Sent As: | ecom124@uspto.gov |
| Attachments: |
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. 88577254
Mark: VODOX
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Correspondence Address:
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Applicant: Hajoca Corporation
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Reference/Docket No. N/A
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: December 17, 2019
This Office action is in response to applicant’s communication filed on October 28, 2019.
In a previous Office action dated October 4, 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.
Further, 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.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) LIKELIHOOD OF CONFUSION 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/or 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/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.
Applicant applied for the mark VODOX for “faucets” in Class 11.
Registrant is registered for the mark VODXS, in part, for “faucets” in Class 11.
1. 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).
Here, applicant’s mark and registrant’s mark are nearly identical, making them similar in sound, appearance, and overall commercial impression. There isn’t a correct way to pronounce a mark. Therefore, although registrant’s mark is missing an “O” and has an “S” at the end, the remainder of the letters are similar enough for consumers to pronounce them similarly. Since the marks’ spelling is so similar, it enables a likelihood of confusion to exist between the marks.
2. Relatedness of the Goods
In this case, the goods in the application and registration are identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
APPLICANT’S RESPONSE
Applicant argues that there is no likelihood of confusion between applicant’s mark and registrant’s mark because the marks are dissimilar in appearance, sound, meaning, and commercial impression, and consumers will exercise a higher degree of care in regards to the goods because they are sophisticated purchasers. However, the marks are confusingly similar because the sound and appearance are similar and the goods are identical.
Marks’ Appearance, Sound, Meaning, and Commercial Impression
Applicant argues that the marks are dissimilar because applicant’s mark is a coined term and registrant’s is not, the appearance is entirely different, consumers are likely to pronounce the words differently, and the meanings are different. First, the fact that applicant’s mark is a coined term does not eliminate the similarity in appearance. Applicant focuses on familiar meanings that are not readily understood when seeing registrant’s mark to argue that the marks’ appearance is different. On their face, applicant’s mark and registrant’s mark are similar. The appearance is similar because they both have “VOD” in them and have similar endings. The proposed familiar meanings does not change how that the marks appear similar.
Second, applicant states the appearance of applicant’s mark is entirely different because registrant’s mark is composed of familiar terms and the suffixes create distinct terms. Applicant’s mark is not comprised of familiar terms that consumers would readily be aware of when viewing the mark. On its face, if consumers would see VODXS, they would not conclude that it stood for “visual on demand”. If consumers would see VOD and impart a particular meaning to it, there is no reason they would not impart the same meaning to the opening three letters in applicant’s mark. Applicant states that VODOX has the suffix DOX and VODXS has the XS suffix. When reading the marks as whole, the endings DOX and DXS look similar because both contain the letters D and X. Even though the suffixes are varied, the endings appear the same because they share similar lettering. On its face, applicant’s mark and registrant’s mark share VOD, and the endings DOX and DXS share lettering. It is likely that consumers would read VODXS as one word with no familiar meaning, which leads to VODOX and VODXS appearing similar because of the similar spelling. In sum, the spelling and appearance of the marks are similar.
Third, the marks could be pronounced similarly because there is no definitive way to determine how a mark can be pronounced. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such 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).
Fourth, applicant argues that the meanings of the marks are different. Consumers would not impart a particular meaning when seeing VOD in registrant’s mark. If consumers would see VOD and associate it with a particular meaning, then consumers would impart the same meaning when seeing VOD in applicant’s mark. Therefore, a likelihood of confusion still exists.
Finally, applicant’s mark and registrant’s mark are similar enough in appearance and sound to cause a likelihood of confusion since the goods are identical. Where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
The Degree of Care Exercised by Consumers
Applicant argues that consumers will have a heightened degree of care because registrant’s goods are technologically driven while applicant’s goods are plumbing supplies without monitors or visual displays. The goods listed in the application and registration are identical. When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Registrant has the ability to provide basic plumbing supplies without monitors or visual displays to more advanced faucets like those displayed in applicant’s exhibits, because registrant’s wording encompasses all faucets. A likelihood of confusion exists because applicant’s and registrant’s identifications are identical and registrant’s identification is not restricted to technologically advanced faucets.
Additionally, even if some of the purchasers are sophisticated, 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 like applicant argues, 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). Therefore, it is possible that common purchasers may confuse applicant’s mark with registrant’s mark because the goods are identical.
Applicant’s mark is confusingly similar to registrant’s mark, and the goods are related. Therefore, applicant’s application is refused under Section 2(d) of the Trademark Act. This refusal is made FINAL.
RESPONSE GUIDELINES
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 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).
/Chandel Boozer/
Examining Attorney
Law Office 124
571-272-7272
chandel.boozer@uspto.gov
RESPONSE GUIDANCE