United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88676889
Mark: CENTURION
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Correspondence Address: Notaro, Michalos & Zaccaria P.C. 100 Dutch Hill Road, Suite 240
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Applicant: SM Signature Inc.
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Reference/Docket No. J906-048
Correspondence Email Address: |
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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: March 31, 2020
This Office action is in response to applicant’s communication filed on March 12, 2020.
In a previous Office action dated January 29, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to amend the identification of goods and satisfy the multiple class application requirements.
Based on applicant’s response, the trademark examining attorney notes that the classification and identification of goods requirement has been satisfied. See TMEP §§713.02, 714.04. In addition, the multiple class application requirements have been obviated. See TMEP §§713.02, 714.04.
However, applicant’s arguments against the Section 2(d) refusal for likelihood of confusion were reviewed but found unpersuasive for the reasons discussed herein.
As a result, the trademark examining attorney maintains and now makes FINAL the Section 2(d) refusal for likelihood of confusion with the registered mark. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS:
SECTION 2(d) REFUSAL – 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.
COMPARISON OF THE MARKS
The applied-for mark is CENTURION in standard characters.
The registered mark is CENTURION (Reg. No. 4938061) with a design element.
In the present case, the literal portions of both the applied-for and registered mark is “CENTURION” The word portions of these marks are identical 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, 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. Id.
The addition of a design element and stylized lettering to the registered mark does not obviate the similarity between it and the applied-for mark. 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. 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. 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)).
As a result, the marks are confusingly similar and share the same overall commercial impression.
COMPARISON OF GOODS
The applicant’s goods are identified as “Neckties, bow ties, pocket squares and dress shirts.”
The registrant’s goods are identified as “Suitcases; Travelling trunks; Garment bags for travel; Valises; Handbags; Canvas shopping bags; Leather shopping bags; Reusable shopping bags; Shopping bags with wheels attached; Textile shopping bags; Mesh shopping bags; Briefcases; Trunks being luggage; Bags for climbers in the nature of all-purpose carrying bags; Wallets; Purses; Backpacks; Suitcase handles; Rucksacks; Travelling cases of leather; Business card cases; and Traveling bags.”
Applicant’s Arguments
Applicant contends in its March 12, 2020 Response to Office Action that confusion is unlikely because, although “[t]he marks are nearly identical,” the goods identified by applicant and registrant are sufficiently different so as to render confusion unlikely, that other third party registrations exist for allegedly similar marks for the same or similar goods, and that the submitted evidence is insufficient to establish the relatedness of the goods such that confusion is likely. These arguments were reviewed but found unpersuasive.
First, applicant contends that confusion is unlikely because the nature, use, and purpose of the goods of applicant and registrant are different. However, this argument misstates the nature of the likelihood of confusion analysis. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
As explained above and in the previous Office action, the goods 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] 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). Here, the evidence of record clearly establishes that the goods identified by applicant and registrant are of a type that are commonly marketed, offered, and sold under the same mark and by the same source. Thus, the goods of applicant and registrant are of a type that would lead consumers to arrive at the mistaken belief that they emanate from the same source.
Moreover, to the extent that the goods of applicant and registrant differ, the applied-for and registered marks are essentially identical, as applicant concedes (“The marks are nearly identical.”). Applicant’s March 12, 2020 Response to Office Action, p. 2. Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Next, applicant contends that the internet evidence attached to the previous Office action is insufficient to establish that the goods identified by applicant and registrant are commonly available from a single source. First, it is noted that for purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
Applicant also argues that the existence of the same products being sold through the same website is insufficient to establish their relatedness. This argument misstates the established evidence. As explained above and in the previous Office action, the evidence of record shows that the goods identified by applicant and registrant, namely neckties, bow ties, pocket squares, dress shirts, produce wallets and various types of luggage and bags, including backpacks, travelling cases and bags, briefcases, handbags, and suitcases, are all of a kind that are commonly produced by the same entities and marketed and sold under the same mark.
Although applicant contends that this evidence does not show that consumers would draw any particular inference from the submitted evidence, the evidence in fact establishes that consumers are accustomed to encountering the goods of applicant and registrant being produced, marketed, and sold by the same source. In addition, the fact that a multitude of other websites exist on the internet does not alter the fact that the evidence of record consisting of a number of third party websites and registrations demonstrate that the goods of applicant and registrant are commonly produce, marketed, and sold by the same entities.
In summary, applicant’s and registrant’s marks create the same commercial impression and their respective goods are sufficiently related such that consumers are likely to be confused by the use of similar marks on or in connection with these goods. Accordingly, the refusal to register the applied-for mark for likelihood of confusion with the registered mark pursuant to Section 2(d) of the Trademark Act is continued and made FINAL.
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).
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE