United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

 

Issue date:  December 31, 2019

 

 

PRIORITY ACTION

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On 12/30/19, the examining attorney and Holly Gordon discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES

 

• Section 2(d) Refusal – Likelihood of Confusion

 

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. 4382955 (SAN ANTONIO RAMPAGE & design) and 2757651 (SAN ANTONIO RAMPAGE & design).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applicant has applied to register the mark SAN ANTONIO RAMPAGE & design, for “key chains; ornamental lapel pins”, “stickers; bumper stickers; pens; calendars; posters; magazines featuring information on ice hockey; books in the field of ice hockey”, “cups and mugs; water bottles sold empty; shot glasses; drinking glasses, namely, tumblers; foam drink sleeves”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” and “entertainment services in the nature of professional hockey games”.

 

Registration is refused because of a likelihood of confusion with Registration No. 4382955 for SAN ANTONIO RAMPAGE & design for “stickers; bumper stickers, posters”, “Cups and mugs; shot glasses”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” and Registration No. 2757651 for SAN ANTONIO RAMPAGE & design for “entertainment in the nature of professional hockey games”.

 

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.

 

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).

 

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).

 

Here, applicant’s proposed mark, SAN ANTONIO RAMPAGE & design and the marks in Registration Nos. 4382955 and 2757651 for SAN ANTONIO RAMPAGE & design contain the identical wording SAN ANTONIO RAMPAGE, creating a highly similar commercial impression.  The differences in the stylization and design do not obviate the overall similar commercial impression created by the identical wording. When evaluating a composite mark consisting of words and a design, 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 and/or services.  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)).  Moreover, here, the head of the bull in the applied-for mark is identical to the head of the bull in the registered marks.

 

In sum, given the wording in the applied-for mark and registered marks is identical, and a portion of the designs are identical, it follows that the marks create a highly similar commercial impression.

 

Comparison of the Goods and Services

 

Applicant’s goods and services are identified as “key chains; ornamental lapel pins”, “stickers; bumper stickers; pens; calendars; posters; magazines featuring information on ice hockey; books in the field of ice hockey”, “cups and mugs; water bottles sold empty; shot glasses; drinking glasses, namely, tumblers; foam drink sleeves”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” and “entertainment services in the nature of professional hockey games”. 

 

Registrant’s goods and services are identified as “stickers; bumper stickers, posters”, “Cups and mugs; shot glasses”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” (Reg. No. 4382955) and “entertainment in the nature of professional hockey games” (Reg. No. 2757651).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

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 goods in the application and Registration No. 4382955 are identical as to “stickers; bumper stickers, posters”, “Cups and mugs; shot glasses”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” and the services in the application and Registration No. 2757651 are identical.  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods and 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 services are related.  

 

Is sum, upon encountering SAN ANTONIO RAMPAGE & design, used in connection with “key chains; ornamental lapel pins”, “stickers; bumper stickers; pens; calendars; posters; magazines featuring information on ice hockey; books in the field of ice hockey”, “cups and mugs; water bottles sold empty; shot glasses; drinking glasses, namely, tumblers; foam drink sleeves”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” and “entertainment services in the nature of professional hockey games” and SAN ANTONIO RAMPAGE & designs, used in connection with “stickers; bumper stickers, posters”, “Cups and mugs; shot glasses”, “cloth pennants; felt pennants”, “clothing, namely, t-shirts, jerseys, sweatshirts, jackets, sweatpants; headwear, namely, caps”, “toys, namely, plush toys and stuffed animals; toy novelty items, namely, foam fingers and hands; toy hockey sticks; toy hockey pucks; sporting goods, namely, hockey sticks; hockey pucks” and/or “entertainment in the nature of professional hockey games,” consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.

 

Response Options

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

Alternatively, if the marks in the cited registrations are owned by applicant, as discussed with counsel, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)       Submit copies of documents evidencing the chain of title.

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration No. 4382955 and 2757651.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

RESPONDING TO THE PRIORITY ACTION

 

Please call or email the assigned trademark examining attorney with questions about this Priority 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 refusal in this Priority action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Priority 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. 

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

AMENDMENT TO IDENTIFICATION OF GOODS IN CLASSES 14 AND 16

 

The identification of goods in Classes 14 and 16 are amended to read as follows: 

 

Class 14: key chains; ornamental lapel pins; 

 

Class 16: stickers; bumper stickers; pens; calendars; posters; magazines featuring information on ice hockey; books in the field of ice hockey.

 

See TMEP §§1402.01, 1402.01(e).

 

Disclaimer IS Added

 

The following disclaimer statement is added to the record:

 

            No claim is made to the exclusive right to use “SAN ANTONIO” apart from the mark as shown.

 

See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).

 

Description of the Mark is Amended

 

The following description of the mark replaces the current description of record:

 

            The mark consists of concentric circles featuring a bull's head snorting smoke from its nose in the innermost circle, surrounded by the words "SAN ANTONIO RAMPAGE" in an outer shaded circle.  There is a single small circle on each side of the shaded circle between the wording “SAN ANTONIO” and “RAMPAGE”. 

 

See 37 C.F.R. §§2.37, 2.72; TMEP §§808 et seq.

 

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.

 

 

/Ashley D. Hayes/

Ashley D. Hayes

Examining Attorney

Law Office 108

(571) 272-2826

ashley.hayes@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 December 31, 2019 for

U.S. Trademark Application Serial No. 88629486

 

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. 

 

 

/Ashley D. Hayes/

Ashley D. Hayes

Examining Attorney

Law Office 108

(571) 272-2826

ashley.hayes@uspto.gov

 

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 December 31, 2019, 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.”