| To: | The Toro Company (linda.byrne@toro.com) |
| Subject: | U.S. Trademark Application Serial No. 88684022 - HORIZON - 406TM |
| Sent: | April 06, 2020 03:04:55 PM |
| Sent As: | ecom127@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88684022
Mark: HORIZON
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Correspondence Address: |
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Applicant: The Toro Company
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Reference/Docket No. 406TM
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: April 06, 2020
This Office action is in response to applicant’s communication filed on February 14, 2020.
In a previous Office action dated January 4, 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 registered marks. In addition, applicant was required to amend the identification of goods and satisfy any applicable multiple-class application requirements.
Applicant responded on February 14, 2020, in which it argued against the Section 2(d) refusal and amended the identification of goods. Based on applicant’s response, the trademark examining attorney notes that the identification of goods requirement has been satisfied, and the multiple-class application requirements have been obviated. See TMEP §§713.02, 714.04.
However, applicant’s arguments with regard to the Section 2(d) refusal for a likelihood of confusion with the registered marks HORIZON (Reg. No. 5404382) and HORIZON (Reg. No. 5389282) have been 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 a likelihood of confusion with the registered marks. See 37 C.F.R. §2.63(b); TMEP §714.04. All evidence and arguments included in the January 4, 2020 Office action are incorporated herein by reference.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – FINAL
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, the registered marks are HORIZON (Reg. No. 5404382) in standard character form, and HORIZON (Reg. No. 5389282) with stylization and design elements. The registrations are owned by the same registrant.
The applied-for mark is HORIZON in standard character form.
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).
With regard to the registered mark HORIZON (Reg. No. 5404382), the applied-for and registered marks are identical. The applicant’s mark is HORIZON in standard character form, and the registrant’s mark is also HORIZON in standard character form. 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.
Similarly, with regard to the registered mark HORIZON (Reg. No. 5404382), the word portions of the marks are identical. The only difference between the marks is the inclusion of stylization and design elements in the registered mark. This difference, however, is insufficient to obviate the similarity of the marks. Here, the applied-for mark is in standard character form, and thus 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). As such, 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”).
Further, 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)). In this case, the word portions of the marks are nearly identical in appearance and identical in sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
In sum, based on the substantial similarity between the marks, the applied-for mark HORIZON shares the same overall commercial impression as the registered marks HORIZON (Reg. No. 5404382) and HORIZON (Reg. No. 5389282). Thus, the marks are confusingly similar.
COMPARISON OF THE GOODS
Here, the registrant’s relevant goods are identified as “Computer software for operating indoor and outdoor floor and surface cleaning, sweeping, polishing, and scrubbing machines, carpet cleaning machines, lawn care machines, leaf removal machines and snow removal machines” in International Class 009.
The applicant’s goods as amended are identified as “downloadable computer software for monitoring equipment run times for outdoor power equipment related to landscaping, lawn care, tree care and construction projects, suitable for use by landscape contractors”, also in International Class 009.
In this case, the registrant’s broad identification for computer software for operating lawn care, leaf removal, and snow removal machines encompasses the applicant’s narrower identification for downloadable computer software for monitoring equipment run times for outdoor power equipment used in landscaping and lawn and tree care, in particular for monitoring the run times of the equipment. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). As such, the applicant’s identification merely identifies a more specific function of the software used to operate outdoor power equipment used in landscaping and lawn and tree care, which includes machines for lawn care and leaf and snow removal. Thus, based on the description of the goods stated in the application and registration at issue, the applicant’s goods are encompassed by the registrant’s goods, and applicant’s and registrant’s goods are therefore legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Thus, applicant’s and registrant’s goods are related.
Applicant’s Arguments:
Applicant argues in its February 14, 2020 that confusion is unlikely because of purported differences in the marks, that other third party registrations exist for other Class 009 software that are comprised of the wording “HORIZON”, that applicant’s goods are not, in fact, related, that the fame of applicant’s house mark “TORO” paired with the sophistication of prospective purchasers weighs against confusion, and that applicant’s and registrant’s goods have co-existed for in the marketplace for several years without evidence of actual confusion. These arguments have been reviewed but found unpersuasive.
First, applicant has mistakenly argued that the marks are dissimilar because “Applicant’s HORIZON mark appears next to the word “Technology” and the house mark TORO.” However, this assertion is facially inaccurate. The applied-for mark is HORIZON in standard character form, without any other wording. Applicant’s mark is identical to the registered mark HORIZON (Reg. No. 5404382) and nearly identical to the registered mark HORIZON (Reg. No. 5389282) with stylization and design elements. Thus, the marks are confusingly similar and share the same commercial impression.
Next, applicant contends that applicant’s and registrant’s goods are dissimilar because “Registrant’s software is used in the operation of commercial cleaning equipment, namely, industrial floor sweeping machinery”. However, contrary to applicant’s misreading of the registrant’s identification, registrant’s goods include computer software for operating, among other things, lawn care machines, leaf removal machines, and snow removal machines, and are not exclusive to “industrial floor sweeping machinery”, as applicant has contended. As explained above, registrant’s broad identification for computer software for operating lawn care, leaf removal, and snow removal machines encompasses the applicant’s narrower identification for downloadable computer software for monitoring equipment run times for outdoor power equipment used in landscaping and lawn and tree care, in particular for monitoring the run times of the equipment. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). As such, the applicant’s identification merely identifies a more specific function of the software used to operate outdoor power equipment used in landscaping and lawn and tree care, which includes machines for lawn care and leaf and snow removal. While applicant’s argues that the limiting language in its amended identification stating that applicant’s goods are “suitable for use by landscape contractors” obviates the similarity of the goods, nothing in the registrant’s broad identification indicates that its software for operating lawn care, leaf removal, and snow removal machines is not suitable for use by landscape contractors.
In addition, to the extent that the registrant’s goods encompass, but are not entirely identical, to the applicant’s goods, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Moreover, applicant’s submitted evidence showing “social media coverage of Registrant’s HORIZON goods” that purportedly “clarifies that Registrant’s software operates robotic indoor floor cleaning machines” is not persuasive. 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)). The extrinsic evidence provided by the applicant purporting to show the actual nature of applicant’s and registrant’s goods is irrelevant here, as the determination of the relatedness of the goods is based only on the description of the goods stated in the application and registration at issue.
Applicant further argues that consumers would be able to distinguish between the applied-for and registered marks because of the fame of applicant’s house mark, the sophistication of the consumer base, and because applicant’s consumers would be unlikely to encounter promotional materials for registrant’s goods. However, the marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In addition, even if consumers of the compared goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). The identity of the marks and the relatedness of the goods “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
Applicant also argues that, given that the registered marks registered in early 2018 and that applicant has been using its mark in commerce since 2013, “it therefore appears that the Applicant and Registrant have coexisted in the U.S. marketplace for several years” and that “Applicant is aware of no incidents of actual confusion during those years.” However, “‘[a] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
Applicant has also submitted printed or electronic copies of third-party registrations for marks comprised of the word “HORIZON” associated with software goods in International Class 009 to show that the mark is “so commonly used that the public will look to other elements to distinguish the goods.” Although some of these registrations do appear to be for software goods in International Class 009, none of the attached registrations pertain to software that provides a function remotely similar to those identified by applicant and registrant in this case, and applicant has not argued otherwise.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising third-party registrations for similar marks with different or unrelated goods, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording “HORIZON” is weak or diluted for the type of software identified by the applicant and registrant in this case.
Finally, in a likelihood of confusion determination, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In summary, applicant’s and registrant’s marks create the same commercial impression, and the goods the applicant’s mark identifies are sufficiently related to the registrant’s goods such that consumers are likely to be confused as to the source of these goods. Accordingly, the refusal to register the applied-for mark for a likelihood of confusion with the registered marks 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).
/Laura Taraban/
Laura Taraban
Trademark Examining Attorney
Law Office 127
(571) 272-3352
laura.taraban@uspto.gov
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