To: | SC Vessel 3, LLC (tlee@pryorcashman.com) |
Subject: | U.S. Trademark Application Serial No. 88701973 - ROC - 20272.00001 |
Sent: | September 25, 2020 10:29:27 AM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88701973
Mark: ROC
|
|
Correspondence Address:
|
|
Applicant: SC Vessel 3, LLC
|
|
Reference/Docket No. 20272.00001
Correspondence Email Address: |
|
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: September 25, 2020
This Office action is in response to applicant’s communication filed on September 2, 2020.
In a previous Office action dated March 2, 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.
Based on applicant’s response, the trademark examining attorney notes that the identification of goods requirement has been satisfied. See TMEP §§713.02, 714.04. However, applicant did not argue against or otherwise respond to the Section 2(d) refusal for a likelihood of refusal with the registered marks beyond indicating that it “reserves its right to address the 2(d) refusal in due course”.
As a result, the trademark examining attorney maintains and now makes FINAL the Section 2(d) refusal set forth in the summary of issues below. 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 – 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 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.
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 ROC (Reg. Nos. 5737076 and 5737077) with design elements, and ROK (Reg. No. 3958557) in standard character form.
The applied-for mark is ROC 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).
In this case, the applied-for and registered mark share the highly similar or identical wording “ROC” and “ROK”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
With regard to the registered marks ROC (Reg. Nos. 5737076 and 5737077), the applied-for and registered marks share the identical wording “ROC”, which comprises the entirety of the word portion of each of the marks. The word portion of these marks is 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 the word elements 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 inclusion of design elements in the registered marks does not obviate the similarity between the applied-for mark ROC and the registered marks ROC (Reg. Nos. 5737076 and 5737077). 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). 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”).
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)).
With regard to the registered mark ROK (Reg. No. 3958557), the applied-for and registered marks are nearly identical except that the last letter of the applied-for mark ROC is a “C” instead of a “K”. This difference, however, has no effect on the sound of the applied-for mark’s “ROC” from the registered mark’s “ROK”. Despite the slight difference in spelling, the marks are phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
In sum, based on the substantial similarity between the marks, the applied-for mark ROC shares the same overall commercial impression as the registered marks ROC (Reg. Nos. 5737076), ROC (Reg. No. 5737077), and ROK (Reg. No. 3958557). As such, the marks are confusingly similar.
COMPARISON OF THE GOODS
In a likelihood of confusion determination, the goods and/or 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).
Here, the applicant’s goods, as amended, are identified as “Clothing, namely, shirts, t-shirts, tank tops, polo shirts, cardigans, jerseys, tops, blouses, dresses, skirts, bottoms, leggings, tights, pants, jeans, denim jeans, denim pants, denim jackets, cargo pants, jump suits, jumpers, rompers, shorts, boxer shorts, sweat shirts, hooded sweat shirts, sweat shorts, sweat pants, sweat suits, warm-up suits, sweaters, wraps, shrugs, pashmina shawls, ponchos, overalls, vests, fleece vests, anoraks, jackets, pullovers, blazers, suits, coats, turtlenecks, swimwear, beachwear, tankinis, headwear, hats, baseball caps, caps and visors being headwear, headbands, ear muffs, scarves, aprons, bandanas, belts, neckwear, suspenders, underwear, briefs, socks, hosiery, leg warmers, gloves, mittens, loungewear, robes, underclothes, undergarments, pajamas, lingerie, sleepwear, infantwear, layettes, infant sleepers, booties, rainwear, footwear, shoes, sneakers, boots, sandals, flip-flops and slippers” in International Class 025.
The registrant’s goods for the registered marks ROC (Reg. Nos. 5737076 and 5737077) are identified as “Clothing, namely, hats, baseball hats, winter hats, beanies, t-shirts, sweatshirts, jerseys, warm-up jackets, pants, warm-up pants, jackets, pull-overs, hoodies, base layer garments, socks, shoes and footwear” in International Class 025. The registrations are owned by the same registrant.
The registrant’s goods for the registered mark ROK (Reg. No. 3958557) are identified as “Denims; Jackets; Jeans; Long-sleeved shirts; Pants; Shorts; Shirts; T-shirts; Polo shirts; Sweaters; Hooded pullovers; Hooded sweat shirts; Hoods; Men's and women's vests” in International Class 025.
With regard to the registered marks ROC (Reg. Nos. 5737076 and 5737077), the applicant and registrant have identified identical goods, which each identifying “t-shirts”, “sweatshirts”, “jerseys”, “pants”, “hats”, “footwear”, and “shoes”. 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., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). In addition, the registration uses broad wording to describe its goods as “pants”, “shoes”, and “jackets”, which presumably encompasses all goods of the type described, including the applicant’s more narrow identifications for “sneakers”, “boots”, “sandals”, “jeans”, “denim jeans”, “denim pants”, “denim jackets”, and “cargo pants”, which are all types of pants, shoes, and jackets. 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).
With regard to the registered mark ROK (Reg. No. 3958557) the applicant and registrant have identified identical goods, which each identifying “shirts”, “t-shirts”, “polo shirts”, “jeans”, “hooded sweat shirts”, “sweaters”, and “jackets”. 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., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). In addition, the application and registration use broad wording to describe the various goods. For example, the registration uses broad wording to describe its goods as “denims”, which presumably encompasses all goods of the type described, including the applicant’s more narrow identifications for “denim jeans”, “denim pants”, and “denim jackets”, which are all types of denims. 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). Further, the application uses broad wording to describe its goods as “vests”, which presumably encompasses all goods of the type described, including registrant’s narrower identification for “men’s and women’s vests”.
Moreover, in general, applicant’s and registrants’ goods are related because all of the various items identified in the application and registration at issue are types of clothing. Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods. Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Finally, 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 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).
/Laura Taraban/
Laura Taraban
Trademark Examining Attorney
Law Office 127
(571) 272-3352
laura.taraban@uspto.gov
RESPONSE GUIDANCE