| To: | Valiant Group (media@valiant-america.com) |
| Subject: | U.S. Trademark Application Serial No. 88694148 - VALIANT - N/A |
| Sent: | February 21, 2020 07:27:47 AM |
| Sent As: | ecom109@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
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. 88694148
Mark: VALIANT
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Correspondence Address:
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Applicant: Valiant Group
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Reference/Docket No. N/A
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 21, 2020
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.
SUMMARY OF ISSUES:
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. 5727466. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 services 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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
The applicant has applied to register the mark VALIANT and design for “General construction contracting” in International Class 37.
Registration No. 5727466 is for the mark VALIANT CONSTRUCTION LLC for “Construction project management services; General building contractor services; Building construction services” in International Class 37.
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).
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).
Both applicant and registrant contain a design of a shield with the word VALIANT appearing underneath the shield design.
Because both applicant and registrant share the wording VALIANT, consumers would be likely to believe the services connected with both of these marks originate from the same source because the overall consumer impression of the wording VALIANT is confusingly similar when used in connection with related services.
For these reasons, the marks are confusingly similar.
Relatedness of the Services
The 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).
Unrestricted and broad identifications are presumed to encompass all services of the type described in the applicant’s or registrant’s identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
The applicant’s identification uses broad wording, such as “General construction contracting,” which is the same as or encompasses the registrant’s more narrow identifications of building construction and building contractor services.
In addition, neither the application nor the registration contains any limitations regarding trade channels for the services and therefore it is assumed that registrant’s and applicant’s services, namely, various construction related services, are sold everywhere that is normal for such services are provided. Thus, it can also be assumed that the same classes of purchasers shop for these services and consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
Accordingly, the marks are similar in sound and appearance, and the services are closely related, if not identical. It is likely that a consumer would mistakenly believe the services emanate from the same source. Registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
SPECIMEN AND DRAWING DO NOT MATCH
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 37, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as having a black font for the wording VALIANT. However, the drawing displays the mark with the wording VALIANT in grey font. The mark on the specimen does not match the mark in the drawing because the colors do not match. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing. See 37 C.F.R. §2.72(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. The following color claim and description are suggested, if accurate:
Color claim: “The colors grey, green, and black are claimed as a feature of the mark.”
Description: “The mark consists of the following: a green and grey circular shield, with the shield containing a grey chevron with a green middle, a green circle superimposed with grey dots, and a dark and light grey outer rim of the shield. A dark and light grey shaded sword is superimposed vertically through the center of the shield. Underneath the design is the wording VALIANT in grey stylized font. The color white represents background and/or transparent area and is not claimed as a feature of the mark.
(2) Submit a new black-and-white drawing of the mark and an amendment deleting any color claim and modifying the description to delete any references to color. The following description is suggested, if accurate: “The mark consists of a shield with a sword superimposed upon it over the wording “VALIANT” in stylized font.” Applicant may amend the mark in the drawing to delete color but may not make any other changes or amendments that would materially alter the mark on the drawing. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(3) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce in the colors depicted on the drawing and for the goods and/or services in the application or amendment to allege use, and (b) in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
COLOR CLAIM AND DESCRIPTION OF THE DRAWING
The suggestions of how to amend the color claim and drawing description appear in the section above regarding the failure of the drawing and the specimen to match. Applicant must amend the drawing description as accurate based on whether applicant submits a black and white drawing or keeps the current drawing.
How to respond. Click to file a response to this nonfinal Office action.
Annie M Noble
/Annie M. Noble/
Trademark Examining Attorney
Law Office 109
(571) 272-3272
annie.noble@uspto.gov
RESPONSE GUIDANCE
