To: | Fox Products, LLC (trademarks@keaneip.com) |
Subject: | U.S. Trademark Application Serial No. 88778513 - FOX TOP - 551-10708 |
Sent: | March 25, 2020 06:14:06 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88778513
Mark: FOX TOP
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Correspondence Address: |
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Applicant: Fox Products, LLC
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Reference/Docket No. 551-10708
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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark FOX TOP for “pickup truck caps” in International Class 12.
The cited marks, all owned by the same registrant, are listed below:
Reg. No. |
MARK |
OWNER |
RELEVANT GOODS AND/OR SERVICES |
CLASS |
2321069 |
FOX |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
2321107 |
FOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
3669224 |
FOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
3882587 |
FOX RACING SHOX |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
4204552 |
FOX RACING SHOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
4303887 |
FOX PERFORMANCE SERIES |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
5584002 |
FOX FACTORY |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
5590471 |
FOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
5760345 |
FOX FACTORY (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
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.
In the present case, the following factors are most relevant: similarity of the marks, relatedness of the goods, and similarity of the trade channels of the goods.
Comparison of the Marks
Here, applicant’s mark is confusingly similar with the registered marks because the marks share the wording FOX. First, 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).
Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In this case, the terms “RACING SHOX” in Reg. Nos. 3882587 and 4204552, “PERFORMANCE SERIES” in Reg. No. 4303887, and “FACTORY” in Reg. Nos. 5584002 and 5760345 are merely descriptive of features of registrant’s goods and have been disclaimed. Moreover, as discussed in the disclaimer requirement section below, the wording “TOP” in the applied-for mark is merely descriptive of a feature of applicant’s goods and must be disclaimed. Thus, the terms “RACING SHOX”, “PERFORMANCE SERIES”, and “FACTORY” in the registered marks, and “TOP” in the applied-for mark are less significant in terms of affecting the commercial impression of the compared marks, thereby rendering the wording FOX the dominant portion of the marks.
In Re: Reg. Nos. 2321107, 3669224, 4204552, 5590471 and 5760345
Further, the applied-for mark does not avoid a likelihood of confusion with the registered marks even though applicant’s mark is in standard characters and the registered marks are stylized with design elements. A mark in typed or standard characters, as the applied-for mark is in this case, 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, marks presented in stylized characters and/or with a design elements, as the registered marks are in this case, 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”).
Applicant should note that 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). The marks in this case 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.
Accordingly, applicant’s mark and the registered marks are confusingly similar.
Relatedness of the Goods
The cited marks are listed below:
Reg. No. |
MARK |
OWNER |
RELEVANT GOODS AND/OR SERVICES |
CLASS |
2321069 |
FOX |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
2321107 |
FOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
3669224 |
FOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
3882587 |
FOX RACING SHOX |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
4204552 |
FOX RACING SHOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
4303887 |
FOX PERFORMANCE SERIES |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
5584002 |
FOX FACTORY |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
5590471 |
FOX (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
5760345 |
FOX FACTORY (stylized) |
Fox Factory, Inc. |
vehicle parts, namely, shock absorbers |
12 |
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, applicant’s goods in the nature of “pickup truck caps” are commercially related to registrant’s “vehicle parts, namely, shock absorbers” because the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the services emanate from the same source. As the attached evidence from the third-party websites for American Trucks, Carid, EZ Wheeler and Totally Trucked demonstrate, entities commonly provide the relevant goods to the same classes of customers in the same channels of trade. See:
Thus, applicant’s goods and the goods of the registrant are sufficiently related for purposes of the likelihood of confusion analysis.
Conclusion
Since applicant’s mark and the registered mark are confusingly similar and their goods are sufficiently related, registration of applicant’s mark must be refused under Trademark Act Section 2(d).
If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
REQUIREMENT TO DISCLAIM DESCRIPTIVE WORDING IN THE MARK
The wording “top” is defined in the attached evidence from The American Heritage dictionary online as “the uppermost part, point, surface or end”. Importantly, as the attached evidence from the third-party websites for Cap City Superstore, Durabak and Wikipedia demonstrates, the terms “topper” and “top” commonly are used to describe a truck accessory that is mounted on the top of a truck bed, and is interchangeable with the terms “truck caps”, “camper shells”, “topper shells” and “truck canopies” See:
As such, the wording TOP in the mark is merely descriptive of a feature of applicant’s goods, namely, truck caps that are fitted or mounted on the top of a truck bed. Accordingly, the wording must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “TOP” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action.
/Oreoluwa Alao/
Oreoluwa Alao
Examining Attorney
Law Office 108
(571) 270-7210
oreoluwa.alao@uspto.gov
RESPONSE GUIDANCE