United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88640315
Mark: X SERIES
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Correspondence Address:
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Applicant: Southeast Toyota Distributors, LLC
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Reference/Docket No. 020007.00076
Correspondence Email Address: |
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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: January 11, 2021
On May 14, 2020, action on this application was suspended pending the disposition of U.S. Application Serial No. 88609223. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark X SERIES is for “Automobile equipment packages sold as an integral part of motor vehicles and comprised primarily of a combination, in whole or in part, of exterior accessories, namely, caliper covers for motor vehicles, alloy wheels for motor vehicles, all-terrain tires for motor vehicles, motor vehicle running boards, engine exhaust tips, fender flares for land vehicles, spray-in truck bed liners, and bumper covers for automobiles, and also including plastic overlays for motor vehicle emblems, fog lights for vehicles, and badges of plastic for vehicles” in Class 12.
Registrant’s mark X SERIES is for “Fitted vehicle seat covers; Steering wheel covers; Automobile windshield sunshades” in Class 12, “Unfitted fabric covers for vehicle seats” and Class 24, and “Floor mats for vehicles” in Class 27.
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.
In this case, the marks are similar because they share common wording, and the goods and/or services are related because they are commonly provided by the same entities and under the same mark.
Similarity of Marks
In the present case, the literal element of applicant’s mark is X SERIES and the literal element of registrant’s mark is X SERIES. These marks are identical in part in 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 in part, 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/or services. Id.
Furthermore, 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)). Here, the word portion of applicant’s and registrant’s marks are identical.
For the foregoing reasons, the marks are confusingly similar for purposes of likelihood of confusion.
Relatedness of Goods
The goods and/or services 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).
For the reasons discussed above, registration is refused under Section 2(d) of the Trademark Act.
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Laura M. Wright/
Trademark Examining Attorney
United States Patent and Trademark Office
Phone: (571) 272-5421
Email: laura.wright@uspto.gov
RESPONSE GUIDANCE