To: | Celestron Acquisition, LLC (tina-pto@lozaip.com) |
Subject: | U.S. Trademark Application Serial No. 88657480 - TRAVEL SCOPE - CELEST-322 |
Sent: | November 05, 2019 08:56:14 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88657480
Mark: TRAVEL SCOPE
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Correspondence Address:
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Applicant: Celestron Acquisition, LLC
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Reference/Docket No. CELEST-322
Correspondence Email Address: |
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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: November 05, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – 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. 5891084. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register the mark TRAVEL SCOPE in standard character format for “Telescopes, mounts for telescopes, tripods for telescopes” in class 009.
The mark in Registration No. 5891084 is TRAVELWORLD in standard character format for in pertinent part “Telescopes” in class 009.
Please note, both marks are in standard character format.
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.
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).
In this case, applicant’s mark TRAVEL SCOPE is confusingly similar to the mark TRAVELWORLD in Registration No. 5891084. Specifically, TRAVEL in applicant’s mark is highly similar in sound and appearance to the TRAVEL in registrant’s mark in Registration No. 5891084. Further, this shared word means “sufficiently compact for use on a journey.” See http://www.lexico.com/en/definition/travel.
In summary, because of the contemporaneous use of the word TRAVEL, it follows that purchasers are likely to believe that the marks identify the same source for telescope, telescope mount and telescope tripod goods. Thus, the marks are confusingly similar.
Comparison of the Goods
The applicant’s goods are “Telescopes, mounts for telescopes, tripods for telescopes” in class 009.
The registrant’s goods in Registration No. 5891084 are in pertinent part “Telescopes” in class 009.
As the case law and attached evidence shows, the applicant's telescope, telescope mount and telescope tripod goods and registrant’s telescope goods in Registration No. 5891084 are commercially related, because applicant and registrant provide the identical goods of “telescopes” and many companies provide these types of goods.
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)).
In this case, the goods of “telescopes” in the application and registration are identical. 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)). Thus, applicant’s and registrant’s telescopes goods are related.
Moreover, the attached Internet evidence consists of screenshots from Barska, Meade Instruments, Svbony and Vixen Optics. See http://www.barska.com/optics-telescopes, http://www.barska.com/tripods, http://www.meade.com/telescopes.html, http://www.svbony.com/categories/astronomy-accessories, http://www.vixenoptics.com/Vixen-Telescopes-s/100.htm and http://www.vixenoptics.com/Tripods-for-Telescope-Mounts-s/129.htm. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. 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). Accordingly, purchasers are likely to be confused as to the source of the goods when they encounter telescope, telescope mount and telescope tripod goods offered under highly similar marks. Therefore, applicant's goods and registrant's goods are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the goods are related. Therefore, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
A mark is merely descriptive if it describes a feature of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, applicant’s mark TRAVEL SCOPE includes the individual words TRAVEL and SCOPE. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the applicant has applied to register the mark TRAVEL SCOPE for “Telescopes, mounts for telescopes, tripods for telescopes” in class 009. TRAVEL means “sufficiently compact for use on a journey.” See http://www.lexico.com/en/definition/travel. SCOPE means “a viewing instrument such as a periscope, microscope, or telescope.” See http://www.ahdictionary.com/word/search.html?q=scope. Therefore, TRAVEL SCOPE merely describes that applicant provides telescope goods that are sufficiently compact for use on a journey, which is a feature of applicant’s goods. Specifically, applicant provides portable telescopes. See http://www.celestron.com/products/travel-scope-70-dx-portable-telescope.
Moreover, many companies that provide similar goods as applicant use the phrase TRAVEL SCOPE to describe a feature of their goods, as denoted by the following examples of use in the attached screenshots:
Thus, the wording in the applicant’s mark is merely descriptive of a feature of applicant’s goods.
Therefore, the phrase TRAVEL SCOPE immediately conveys to purchasers that applicant provides telescope goods that are sufficiently compact for use on a journey. Thus, the mark is merely descriptive of a feature of applicant’s goods, and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
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. 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
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE