To: | Barbara A. Brock (alichy@lichylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88637952 - THE TRAVELER - N/A |
Sent: | April 20, 2021 09:00:33 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88637952
Mark: THE TRAVELER
|
|
Correspondence Address: |
|
Applicant: Barbara A. Brock
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: April 20, 2021
This Office action is in response to applicant’s communication filed on September 30, 2020.
In a previous Office action(s) dated September 30, 2020, 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.
The examining attorney withdraws the refusal to register based on descriptiveness.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 5310111. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SUMMARY OF ISSUES MADE FINAL that applicant must address:
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
The applicant has applied for the mark THE TRAVELER. The registrant’s mark is a stylized letter E with the wording LETRAVELER. The English translation of the French wording LE is THE. See attached translation statement. In essence the registrant’s mark is THE TRAVELER. Here, the marks have a very similar connotation.
The registrant’s mark is LETRAVELER with a stylized E, which is a common, modern language in the United States. See In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French). Specifically, the evidence from the internet shows that a large number of U.S. consumers speak this language.
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the French language is a common, modern language spoken by an appreciable number of consumers in the United States. Here, the wording in the marks not only look very similar, but the meaning of the marks is the same. Therefore, the have a very similar commercial impression.
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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Similarity of the Goods
The applicant’s mark is for vanity bags and cases sold empty. The registrant’s mark is for alpenstocks; attaché cases; backpacks; bags for climbers in the nature of all-purpose carrying bags; beach bags; briefcases; business card cases; canvas shopping bags; handbags; harness fittings; haversacks; leather laces; mesh shopping bags; name card cases; pet clothing; pocket wallets; pouch baby carriers; purses; school bags; slings for carrying infants; sports bags; suitcases; travelling bags; travelling trunks; trunks; umbrellas; valises; vanity cases, not fitted; waist bags. Here, both marks are for types of bags, in particular, vanity cases.
In favor of registration the applicant argues that the goods are not used for the same purposes; however, 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)).
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 registrant’s goods are related.
For the above stated reasons the mark is refused due to a likelihood of confusion.
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).
/Shaunia Carlyle/
Examining Attorney
Law Office 110
United States Patent and Trademark Office
571-272-9374
shaunia.carlyle@uspto.gov
RESPONSE GUIDANCE