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:  January 06, 2020

 

INTRODUCTION

 

This Office Action is in response to applicant’s communication filed on December 6, 2019.

 

In a previous Office Action dated November 12, 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. 

 

Based on applicant’s response, 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:

 

• Refusal: Section 2(d) – Likelihood of Confusion

 

REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4380864.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registration attached to the November 12, 2019 Office Action.

 

The applied-for mark is MINOLTA in standard characters for use in connection with “handheld, battery powered, LED flashlights” in International Class 11.  The registered mark is KONICA MINOLTA in standard characters for use in connection with, in relevant part, “lamps; electric lamps; lights for illuminating stairs, doors and other portions of buildings; lights for use in illuminating signs and displays; lights for vehicles; lighting apparatus, namely, lighting installations; lighting apparatus for vehicles; safety lamps; standard lamps; street lamps; ceiling lights” in International Class 11.

 

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 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.  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

 

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).

 

Again, the applied-for mark is MINOLTA in standard characters, and the registered mark is KONICA MINOLTA in standard characters.

 

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, adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d).  See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii).  It is likely that goods sold under these marks would be attributed to the same source.  See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007).  Accordingly, in the present case, the marks are confusingly similar.

 

In its December 6, 2019 Response, applicant does not contest the similarity of the marks.

 

Similarity of the Goods

 

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).

 

Again, applicant provides “handheld, battery powered, LED flashlights” in International Class 11 and registrant provides “lamps; electric lamps; lights for illuminating stairs, doors and other portions of buildings; lights for use in illuminating signs and displays; lights for vehicles; lighting apparatus, namely, lighting installations; lighting apparatus for vehicles; safety lamps; standard lamps; street lamps; ceiling lights” in International Class 11.

 

In the original November 12, 2019 Office Action, the trademark examining attorney provided multiple pieces of evidence demonstrating that it is common for entities to provide both applicant’s LED flashlights and registrant’s various lighting goods under the same mark.  In its Response, applicant argues that there is no likelihood of confusion because flashlights are “not closely related” to lamps and the other products in the registration’s identification of goods.  Applicant further avers that there is no evidence of the relevant goods traveling through the same trade channels because “mass retailers . . . sell[] flashlights, lamps and electric lights in distinctly different categories” and “there appears to be no overlap between goods offered by lamp and commercial lighting manufactures like Jesco Lighting Group and flashlight makers such as Mag-Lite, Inc.”  The trademark examining attorney is unpersuaded by both arguments.

 

As a preliminary matter, determining likelihood of confusion is based on the description of the goods 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)).  Therefore, an analysis of likelihood of confusion (including an analysis of the similarity of goods) is based on the identification of goods.  Further, applicant provides an interpretation of the word “lamp” that results in an overly narrow reading of registrant’s identification of goods.

 

The attached dictionary evidence from The American Heritage® Dictionary, for example, establishes that “lamp” refers to “any of various devices that generate light and often heart, especially: a) an electric device having a socket for a light bulb, especially a free-standing piece of furniture; b) a device that gives off ultraviolet, infrared, or other radiation, used for therapeutic purposes; c) a light bulb . . .; d) a vessel containing oil or alcohol burned through a wick; [and] a lantern or fixture that gives off light by burning gas, usually by means of a mantle.”  The dictionary evidence from Oxford Dictionaries defines “lamp” as “a device for giving light, either one consisting of an electric bulb together with its holder and shade or cover, or one burning gas or a liquid fuel and consisting of a wick or mantle and a glass shade.”  Lastly, Merriam-Webster® defines “lamp” as “any of various devices for producing light or sometimes heat such as . . . a glass bulb or tube that emits light produced by electricity (such as an incandescent light bulb or fluorescent lamp).”  In its Response, applicant provides a narrower dictionary definition of the term “lamp” to argue that “flashlight” and “lamp” are wholly distinct.  The above definitions, however, show that “lamp” is a broad enough term to encompass applicant’s flashlights.  Notably, The American Heritage® Dictionary defines the term “flashlight” as “a small portable lamp usually powered by batteries.” 

 

Based on the registrant’s identification of goods, read with the full definitions of the relevant terminology in mind, there is ample evidence to demonstrate the relatedness of applicant’s flashlights to registrant’s various lighting goods.

 

Same Source Evidence

 

Applicant asserts that the earlier-submitted same source evidence failed to show relatedness of applicant’s and registrant’s identified goods because “the goods appearing in the evidence are not in the same class of goods as the lamps and lights listed in the Konica Minolta registration cited by the USPTO.”  The trademark examining attorney respectfully disagrees with this conclusion and asserts that such conclusion results from an overly narrow reading of the registrant’s identification of goods (see above).  See the evidence from Streamlight®, Eveready®, and Coast® attached to the original November 12, 2019 Office Action.

 

To supplement the evidence provided in the original Office Action, the trademark examining attorney has attached 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 as those of both applicant and registrant in this case.  See U.S. Registration Nos. 4889554, 5041177, 5260703, 5350155, 5444339, and 5570662, attached.  This evidence shows that the goods listed therein, namely “LED flashlights” and “lamps” or “lighting installations,” 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).

 

Therefore, the goods are considered similar for likelihood of confusion purposes.

 

Trade Channel Evidence

 

The attached Internet evidence, consisting of screenshots from ACE® Hardware, Lamps Plus®, and IKEA® establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  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).

 

Applicant argues that the relevant goods do not travel in the same trade channels, particularly because evidence from Amazon® shows that “the online retailer sells flashlights, lamps and electric lights in distinctly different categories.”  Contrary to applicant’s argument, the screenshots comprising applicant’s Exhibit E establish that applicant’s and registrant’s identified goods are sold through the same trade channel – Amazon.com.  Notably, applicant’s screenshots also show that both “flashlights” and “lamps” are provided in the same department – “Tools & Home Improvement.”  Therefore, both applicant’s and registrant’s goods are provided in the same department of the same website.

 

Applicant also makes the conclusory argument that “there appears to be no overlap between goods offered by lamp and commercial lighting manufacturers like Jesco Lighting Group and flashlight makers such as Mag-Lite, Inc.”  Applicant’s conclusory statement only references two companies.  Whether two companies, one of which manufactures flashlights while the other manufactures lamps and commercial lighting, have any overlap in their product lines is not determinative of the relatedness of goods analysis.  At best, this is one piece of evidence that could be used to argue that the goods are not closely related.  This evidence does not, however, overcome the multiple pieces of evidence provided to show the overall relatedness of the relevant goods.

 

Conclusion

 

Considering the above, the refusal pursuant to Trademark Act Section 2(d) is hereby made FINAL. 

 

ASSISTANCE

 

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

 

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).

 

 

/Nathan C. Ranns/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 128

Phone: (571) 270-3776

Nathan.Ranns@uspto.gov

 

 

RESPONSE GUIDANCE

 

• 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 06, 2020 for

U.S. Trademark Application Serial No. 88604508

 

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. 

 

 

/Nathan C. Ranns/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 128

Phone: (571) 270-3776

Nathan.Ranns@usp

 

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 January 06, 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.”