Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88778513 FOX TOP(Standard Characters, see http://uspto.report/TM/88778513/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

These remarks are responsive to the office action dated March 25, 2020 (hereinafter the “Office Action”).

I. Introduction:

Examiner rejected Applicant’s mark Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as creating a likelihood of confusion with the various marks registered to Fox Factory, Inc. (hereinafter “Registrant”) under U.S. Reg. Nos. 2321069, 2321107, 3669224, 3882587, 4204552, 4303887, 5584002, 5590471, and 5760344. Applicant seeks to register the mark “FOX TOP,” while Registrant owns the marks “FOX,” “FOX RACING SHOX,” “FOX PERFORMANCE,” and “FOX FACTORY” in both stylized and unstylized forms. Examiner asserts that the Applicant’s desired mark is confusingly similar to Registrant’s mark in two respects: (1) the marks themselves are confusingly similar, and (2) the goods and services provided by Applicant and Registrant are sufficiently related to create a likelihood of confusion. Finally, Examiner asserts that the word “top” as used in Applicant’s mark is merely descriptive and must therefore be disclaimed.

II. The Likelihood of Confusion Inquiry:

Under 15 U.S.C. § 1052(d), an applicant’s mark cannot be registered if that mark “so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. § 1052(d). In order to determine whether two competing marks create a likelihood of confusion, the U.S. Patent and Trademark Office considers the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).

These factors (hereinafter the “du Pont Factors”) include: (1) the similarity or dissimilarity of the marks in their entireties; (2) the similarity or dissimilarity and nature of the goods or services described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the sophistication of consumers; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; i.e., whether de minimis or substantial; (13) any other established fact probative of the effective use.

While there are thirteen du Pont Factors in total, there are two factors that are of special importance: (1) the similarity or dissimilarity of the marks; and (2) the relatedness of the compared goods and/or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976). However, other du Pont Factors may also be relevant—and must be considered if there is pertinent evidence in the record—in an ex parte likelihood of confusion determination: (a) the similarity or dissimilarity of established, likely-to-continue trade channels; (b) the sophistication of consumers; (c) the number and nature of similar marks in use on similar goods; and (d) the existence of a valid consent agreement between the applicant and the owner of the previously registered mark. TMEP § 1207.01.

III. Examiner’s Rejection of Applicant’s Mark

A. The Marks are Dissimilar

Examiner asserts that Applicant’s mark is similar to Registrant’s various marks because (a) the marks “share the wording FOX,” (b) because the word “TOP” as used in Applicant’s mark and the words “RACING SHOX,” “PERFORMANCE SERIES,” and “FACTORY” as used in Registrant’s marks are merely descriptive and thus entitled to lesser significance in comparing the two marks.

Though the Applicant’s mark and Registrant’s marks only share one three-letter word in common—namely “FOX”—Examiner asserts that the remaining words in each mark are not entitled to any meaningful significance because such words are merely descriptive. Specifically, Examiner notes that “disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less dominant when comparing marks.” Examiner notes that Registrant has disclaimed “RACING SHOX,” “PERFORMANCE SERIES,” and “FACTORY” in each if its respective marks. Examiner further argues that Applicant should likewise disclaim “TOP” as being descriptive.

Because Examiner discounts the allegedly descriptive portions of each mark, Examiner places great weight on the use of the word “FOX” in each of the marks. While the marks may share the word “FOX,” and while descriptive material in a mark may generally be entitled to lesser consideration, Examiner’s comparison of marks is unpersuasive because Examiner fails to consider the marks in their entireties. According to the TMEP, “[t]he points of comparison for a word mark are appearance, sound, meaning, and commercial impression.” TMEP 1207.01(b)(i) (first citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005); and then citing In re E. I. du Pont, 476 F.2d at 1361). In the Office Action, Examiner fails to account for various distinctive differences between Applicant’s mark and Registrant’s marks, such as: (a) the difference in appearance between the marks; (b) the difference in the sound of the marks.

1. The Marks are Dissimilar in Appearance

Applicant’s mark is dissimilar from Registrant’s marks because the marks are visibly different in appearance. Specifically, Applicant’s mark is a seven-character word mark, consisting of two three-letter words and a single space between them. Registrant’s marks, on the other hand, consist of: (1) a single three-letter word; (2) two words, including a first three-letter word and a second a seven-letter word; (3) three words including, a first three-letter word, a second six-letter word, and a third four-letter word; and (4) three words, including a first three-letter word, a second eleven-letter word, and a third six-letter word.

Applicant’s mark has seven characters. None of Registrant’s marks have seven characters. Moreover, Applicant’s mark exhibits symmetry: both the first and the second word are three characters in length, with the middle character being an “O.” None of Registrant’s marks exhibit symmetry. Likewise, none of Registrant’s marks have second (or third) word featuring an “O” as the middle character being, much less an “O” as the middle of a second word (or third) word of only three characters.

Applicant’s mark is thus dissimilar than Registrant’s marks in terms of appearance. Examiner places great weight on the similarity of the marks in terms of appearance, namely the similar use of the word “FOX,” but Examiner fails to consider the appearance of the remainder of each mark. Even if Examiner discounts the content of the remaining words as being descriptive, Examiner cannot ignore the existence of the remaining words in each mark because the marks must be considered in their entirety. In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”)

2. The Marks are Dissimilar in Sound

Applicant’s mark is also dissimilar from Registrant’s marks in terms of sound. In particular, Applicant’s mark is a two-syllable word mark, where both the first and second word include a common “o” sound. On the contrary, Registrant’s marks consist of: (1) a single-syllable word; (2) two words, including a first single-syllable word and a second three-syllable word; (3) three words, including a first single-syllable word, a second two-syllable word, and a third single-syllable word; and (4) three words, including a first single-syllable word, a second three-syllable word, and a third two-syllable word.

Applicant’s mark has two words, each having one syllable, and both having a common “o” sound. None of Registrant’s marks have two words with each word having one-syllable. Likewise, none of Registrant’s marks have only two syllables, both with a common “o” sound. While Registrant’s word mark “FOX RACING SHOX” has a common “o” sound in its first and third word, it is clear that “FOX RACING SHOX” sounds different from “FOX TOP,” regardless of one’s pronunciation of each.

Indeed, none of Registrant’s marks sound like Applicant’s mark regardless of which pronunciation is used. Put another way, Applicant does not attempt to distinguish its mark from Registrant’s mark in terms of sound by seeking to advance a particular preferred pronunciation. Instead, it is Applicant’s position that the marks differ in terms of sound regardless of pronunciation because the phonetic structure of Applicant’s mark is plainly different from each of Registrant’s marks.

In sum, Examiner has failed to consider the marks in their entirety and has therefore ignore patent differences in appearance and sound between Applicant’s mark and Registrant’s marks. Applicant’s marks are dissimilar from Registrant’s marks, which weighs against any finding of a likelihood of confusion. Applicant respectfully requests reconsideration and withdrawal of the stated rejection.

B. Applicant’s Goods and Services are Distinct from Registrant’s Goods and Services

Even if marks are deemed similar, other du Pont Factors can tip the scales against a finding of likelihood of confusion. TMEP § 1207.01(a)(i); see also In re Thor Tech, Inc., 113 U.S.P.Q.2d 1546, 1551 (TTAB 2015) (finding no likelihood of confusion even though the marks were identical because there was a difference in the nature of the goods, a difference in the trade channels, and high degree of consumer care). In particular, Applicant’s goods and services are distinct from Registrant’s goods and services, which weighs against a finding of likelihood of confusion.

Examiner asserts that the “circumstances surrounding [Registrant’s and Applicant’s] marketing are such that they could give rise to the mistaken belief that the services emanate from the same source,” thereby weighing in favor of a likelihood of confusion. To support this assertion, Examiner cites to internet evidence showing that “pickup truck caps” and “vehicle parts, namely shock absorbers” are both sold at internet retailers specializing in aftermarket parts for pickup trucks and other vehicles.

However, Examiner’s argument is unpersuasive because it fails to account for the differences between Applicant’s goods and Registrant’s goods and similarly fails to account for the established reputation of Registrant’s goods as being associated with “vehicle parts, namely, shock absorbers.” Registrant sells performance suspension components and shock absorbers. These components are used to enable or improve off-road capabilities of trucks while maintaining comfort on-road. See Fox, Trucks, http://www.ridefox.com/subhome.php?m=truck (last visited Sept. 21, 2020). For nearly 45 years, Registrant is regarded as a leader in the aftermarket and performance suspension product space, supplying enthusiasts with performance suspension components for bicycles, motorcycles, off-road vehicles, snowmobiles, trucks, and utility terrain vehicles. See Fox, Homepage, http://www.ridefox.com (last visited Sept. 21, 2020); Bloomberg, Fox Factory, Inc. Company Profile, http://www.bloomberg.com/profile/company/2348249Z:US (last visited Sept. 21, 2020) (“Fox Factory, Inc. designs and develops shock absorbers and racing suspension products”). For its decades of innovation in the racing suspension and shock absorber market, Registrant and Registrant’s marks have become ubiquitous with high-performance suspension components. Registrant’s reputation and marks are thus deeply intertwined with the performance suspension and shock absorber sub-market.

Applicant, on the other hand, produces and sells pickup truck caps, a truck component entirely unrelated to shock absorbers or racing suspension. While suspension components are associated with the performance, comfort, and drivability of a vehicle or truck, pickup truck caps are purposed for aesthetics and to protect any material or equipment in the bed of a pickup truck. As Examiner notes, pickup truck caps are “a truck accessory that is mounted on top of a truck bed,” and thus not at all related to the truck suspension or performance generally. Pickup truck caps and the function of pickup truck caps are thus entirely unrelated from shock absorbers or suspension components.

Although both pickup truck caps and suspension components for trucks are both components used on trucks, an aesthetic or protective component (i.e. a pickup truck cap) is easily distinguished from a mechanical or performance-oriented component (i.e. a shock absorber). Registrant’s goods represent vehicle components that are distinctly different from Applicant’s. Furthermore, Registrant’s reputation as a leader in the shock absorber sub-market makes it highly unlikely that consumers will mistakenly confuse Applicant’s products and mark as deriving from Registrant.

In sum, because the goods at issue here are distinctly different components within the pickup truck market and because Registrant has a firmly-established reputation in the performance suspension and shock absorber market, confusion amongst consumers is unlikely. Applicant’s goods are thus distinct from Registrant’s goods and services, and this du Pont Factor weighs against a finding of a likelihood of confusion. Accordingly, Applicant respectfully requests reconsideration and withdrawal of the state rejection.

C. Purchasers of Both Applicant’s Goods and Registrant’s Goods are Sophisticated

As demonstrated above, Applicant’s mark is dissimilar from each of Registrant’s marks, Applicant’s goods are distinct from Registrant’s goods, and Registrant has a well-established reputation for specifically producing shock absorbers. What’s more, the consumers interested in both Applicant’s goods and Registrant’s goods will be sophisticated, enthusiast purchasers who are unlikely to confuse Applicant’s mark or goods with Registrant. The sophisticated nature of the relevant consumers makes it unlikely that any confusion will arise. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999–1000 (Fed. Cir. 1985) (finding no likelihood of confusion because only sophisticated purchasers exercising great care would purchase the relevant goods).

The internet evidence cited by Examiner in support of the assertion that Registrant’s goods travel in the same trade channel as Applicant’s confirms that the trade channel in question is one occupied by sophisticated, enthusiast purchasers. For example, “American Trucks” states that its e-commerce store is “For the Enthusiast, By the Enthusiast.” American Trucks, Homepage, http://www.americantrucks.com/ (last visited Sept. 21, 2020). Similarly, “CarID” states on their website that their team “share[s] the same passion for vehicles as [CarID’s customers] do.” CarID, About Us, http://www.carid.com/about-us.html (last visited Sept. 21, 2020). These examples demonstrate that the likely consumer of Registrant’s and Applicant’s goods are those who care are apt to exercise a high degree of care in making their purchase. Indeed, such purchases, whether big or small, will enable enthusiast purchasers to “build the off-road rig of [their] dreams.” EZ Wheeler, About Us, http://www.ezwheeler.com/pages/about-us (last visited Sept. 21, 2020).

More generally, Applicant’s goods and Registrant’s goods are both high-priced goods, which suggests that purchasers will exercise a high degree of care. See, e.g., Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1076 (9th Cir. 2006) (“Confusion is less likely where buyers exercise care and precision in their purchases, such as for expensive or sophisticated items.”). Relatedly, courts have established that purchasers of trucks are likely to exercise a great deal of care in making such a purchase, which suggests they will extend a similar degree of care to additional expensive and related purchases. In re Thor Tech, Inc., 113 U.S.P.Q.2d at 1550 (“Trucks and recreational vehicle towable trailers are not everyday purchases. They are special purchases. A consumer can be expected to pay particular attention to such purchases, and indeed would likely make a careful personal examination of the item before buying. These types of products, at these prices, are not the kinds of products which we think reasonably prudent purchasers would buy, or without researching the product to some degree. Rather, these are items that will be purchased with care and deliberation.”).

Therefore, the relevant purchasers are bound to be sophisticated and will exercise a great deal of care in purchasing either Applicant’s or Registrant’s goods. Such a high degree of sophistication makes confusion unlikely. Accordingly, Applicant believes any that no likelihood of confusion exists. Applicant respectfully requests reconsideration and withdrawal of the stated rejection.

IV. Disclaimer of Descriptive Wording:

Examiner states that Applicant must disclaim the wording “TOP” because it is merely descriptive. Specifically, Examiner asserts that “TOP” is commonly used to describe “a truck accessory that is mounted on the top of a truck bed.” To support this assertion, Examiner cites to internet evidence showing the word “TOP” used to describe pickup truck caps.

Per Examiner’s instruction, but without acquiescing to Examiner’s argument, Applicant hereby disclaims the wording “TOP” in the applied-for mark. No claim is made to the exclusive right to use “TOP” apart from the mark as shown.

V. Conclusion

For the reasons stated herein, there is no likelihood of confusion between the competing marks. Applicant’s applied-for “FOX TOP” mark is thus in condition for registration. Applicant respectfully requests reconsideration and withdrawal of the stated rejection.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Fox Products, LLC, a limited liability company legally organized under the laws of Wisconsin, having an address of
      360 Lake Bluff Drive
      Oconomowoc, Wisconsin 53066
      United States

Proposed: Fox Products, LLC, a limited liability company legally organized under the laws of Wisconsin, having an address of
      360 Lake Bluff Drive
      Oconomowoc, Wisconsin 53066
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use TOP apart from the mark as shown.

Correspondence Information (current):
      MELISSA A. SPINDLER
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@keaneip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 551-10708.
Correspondence Information (proposed):
      Melissa A. Spindler
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@keaneip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 551-10708.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Melissa A. Spindler/     Date: 09/25/2020
Signatory's Name: Melissa A. Spindler
Signatory's Position: Attorney of record, WI bar member

Signatory's Phone Number: 262-563-1438

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    MELISSA A. SPINDLER
   SMITH KEANE LLP
   SUITE 104
   1130 JAMES DRIVE
   HARTLAND, Wisconsin 53029
Mailing Address:    Melissa A. Spindler
   SMITH KEANE LLP
   SUITE 104
   1130 JAMES DRIVE
   HARTLAND, Wisconsin 53029
        
Serial Number: 88778513
Internet Transmission Date: Fri Sep 25 14:15:01 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020092514150103
7359-88778513-75069536ee05b79153872dc6ed
409960cbd528303a29d91c9bc5c41e89216c1-N/
A-N/A-20200925135843173291