United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88768978
Mark: HORIZON
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Correspondence Address: LIPPES MATHIAS WEXLER FRIEDMAN LLP
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Applicant: 933460 Ontario Inc.
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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: April 17, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Prior Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
*Please note that the potential Section 2(d) refusal for Serial No. 88576802 is limited to applicant’s “air mattresses, not for medical purposes”.
Likelihood of Confusion – Section 2(d) Refusal
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.
Similarity of 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).
Applicant’s mark is “HORIZON” in standard characters.
Registrants’ marks are as follows:
Applicant’s mark is (1) identical to the mark in Registration No. 4998603, (2) phonetically equivalent to the mark in Registration No. 5421182 and also visually similar thereto because the only difference is the existence of spaces between the “R” and “I” and the “I” and “Z” in registrant’s mark and (2) highly similar to the marks in Registration Nos. 5501824 and 5690782 because they all begin with, or in the case of applicant’s mark, are entirely comprised of the term “HORIZON”.
Furthermore, please note that merely omitting some of the wording from a registered mark, such as “COORDINATE” in Registration No. 5501824 and “HOUND” in Registration No. 5690782, 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 those registered marks because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Accordingly, the relevant marks are sufficiently similar to support a finding of likelihood of confusion.
Similarity of Goods
Registration No. 4998603 (HORIZON)
Applicant’s goods are as follows:
“Metal tent pegs and poles;” “Non-metal tent poles; air mattresses, not for medical purposes; portable chairs;” “Camping tents; vehicle camping tents; rain flies for tents; sleeves for tent straps made of textile or synthetic material to prevent damage to vehicle paint; screened tent entrance foyers made of textile or synthetic material; awnings for vehicles made of textile or synthetic material; awnings for vehicle camping tents made of textile or synthetic material.”
Registrant’s goods are
“Portable shelters, namely, portable shelters having metal framework.”
These goods are related in that they are all goods for use in connection with camping and, as such, are likely to emanate from the same source and/or be provided, marketed and/or used in connection with one another. See, e.g., attached webpages from www.target.com, www.coleman.com, www.amazon.com and www.rei.com evidencing that (1) portable shelters and (2) tent poles, air mattresses, portable chairs, tents, rain flies and/or awnings do, in fact, emanate from the same sources and/or are provided, marketed and/or used together.
Registration No. 5421182 (HOR I ZON)
Applicant’s goods, to which this refusal applies are
air mattresses, not for medical purposes; portable chairs
Registrant’s most relevant goods, for purposes of this refusal are
Furniture; inflatable furniture
As such, applicant’s goods are encompassed by and/or overlap with registrant’s goods.
Registration No. 5501824 (HORIZON COORDINATE)
Applicant’s goods, to which this refusal applies are
air mattresses, not for medical purposes; portable chairs
Registrant’s most relevant goods, for purposes of this refusal are
Furniture; beds; mattresses.
As such, applicant’s goods are encompassed by and/or overlap with registrant’s goods.
Registration No. 5690782 (HORIZON HOUND)
Applicant’s goods are as follows:
“Metal tent pegs and poles;” “Non-metal tent poles; air mattresses, not for medical purposes; portable chairs;” “Camping tents; vehicle camping tents; rain flies for tents; sleeves for tent straps made of textile or synthetic material to prevent damage to vehicle paint; screened tent entrance foyers made of textile or synthetic material; awnings for vehicles made of textile or synthetic material; awnings for vehicle camping tents made of textile or synthetic material.”
Registrant’s most relevant goods are
“sleeping bags for camping.”
These goods are related in that they are all goods for use in connection with camping and, as such, are likely to emanate from the same source and/or be provided, marketed and/or used in connection with one another. See, e.g., attached webpages from www.target.com, www.coleman.com, www.amazon.com and www.rei.com evidencing that (1) sleeping bags and (2) tent poles, air mattresses, portable chairs, tents, rain flies and/or awnings do, in fact, emanate from the same sources and/or are provided, marketed and/or used together.
Accordingly, based on the similarity of the marks and the relatedness of the goods, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant has the option to respond to the refusal to register by submitting evidence and legal arguments in support of registration.
Responding to this Office Action
How to respond. Click to file a response to this nonfinal Office action
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Telephone/Email Suggested for Questions
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
/Meghan Reinhart/
Meghan M. Reinhart
Trademark Examining Attorney
Law Office 108
(571) 272-2943
meghan.reinhart@uspto.gov
RESPONSE GUIDANCE