To: | Lynco Distribution, Inc. (trademarks@hamiltoniplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88660450 - FROSTBITE - FrostBL_025 |
Sent: | February 08, 2021 07:48:44 AM |
Sent As: | ecom120@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88660450
Mark: FROSTBITE
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Correspondence Address: |
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Applicant: Lynco Distribution, Inc.
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Reference/Docket No. FrostBL_025
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: February 08, 2021
REFUSAL: SECTION 2(d) – LIKELIHOOD OF CONFUSION
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.
In this case, a likelihood of confusion is present because there are similarities between the compared marks and relatedness of the compared goods.
SIMILARITY OF THE MARKS
The applicant’s and registrant’s respective marks, “FROSTBITE” and “MARSHALL FROSTBITE”, are similar in appearance, sound, connotation, and commercial impression.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); 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., 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).
Here, applicant’s mark for “FROSTBITE” deletes the wording “MARSHALL” from registrant’s mark for “MARSHALL FROSTBITE”. 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.
Additionally, registrant’s standard character mark could be stylized identically to applicant’s mark to create the same overall commercial impression. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Because the marks are similar in appearance, sound, connotation, and commercial impression, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
The applicant’s relevant goods are listed below:
International Class 25 Gloves; Gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; Hats; Headwear, namely, beanies, knit hats, stocking caps, warm hats; Sweatshirts; Stocking hats
The registrant’s relevant goods are listed below:
International Class 25 Shirts; T-shirts; tee shirts; long-sleeved shirts; short-sleeved shirts; sweat shirts and sweatshirts; hooded sweat shirts; pants; shorts; tops; bottoms; sleepwear; pajamas; headwear; hats; caps; infant wear; children's wear, namely, tops, shirts, cloth bibs, and one-piece garments; children's and infants' cloth bibs; one-piece garments for infants and children; shirts for infants, babies, toddlers, and children; clothing for babies, infants, toddlers and children, namely, one-piece garments; tops for babies, infants, toddlers, children, women, men, and adults; bottoms for children, women, men, and adults; and pajamas for children, women, men, and adults
The applicant’s and registrant’s goods are related and could give rise to the mistaken belief that they emanate from the same source.
In this case, applicant’s and registrant’s goods could give rise to the mistaken belief that they emanate from the same source because they are commonly provided by the same entity. For example, the attached Internet evidence, consisting of third-party clothing webpages, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark, 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, and the goods are similar or complementary in terms of purpose or function. See the attached internet evidence showing that clothing articles, accessories, and fittings are commonly provided by the same entity:
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).
Upon encountering “FROSTBITE” used on applicant’s goods and “MARSHALL FROSTBITE” used on registrant’s goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration under Section 2(d) of Trademark Act.
RESPONSE OPTIONS
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.
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/Shari Gadson/
Trademark Examining Attorney
Law Office 120
United States Patent and Trademark Office
571-272-9319
shari.gadson@uspto.gov
RESPONSE GUIDANCE