To: | Specialized Bicycle Components, Inc. (tm-dept@quarles.com) |
Subject: | U.S. Trademark Application Serial No. 88792226 - AETHOS - 167611.tbd |
Sent: | May 05, 2020 09:38:25 AM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88792226
Mark: AETHOS
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Correspondence Address:
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Applicant: Specialized Bicycle Components, Inc.
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Reference/Docket No. 167611.tbd
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: May 05, 2020
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. 5243560. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied-for mark is AETHOS for “Bicycle frames; Bicycles” in International Class 12.
The registered mark is ATHOS for “Rims for vehicle wheels; tyres for vehicle wheels” in International Class 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.
Similarity 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).
In this case, the marks create a substantially similar commercial impression because the applied-for mark, AETHOS, differs from the registered mark, ATHOS, by only one letter. Applicant has merely added the letter “E” after the letter “A” in the term. Thus, the marks are highly similar in terms of appearance. Further, the marks are pronounced similarly. The attached evidence from the Meriam Webster Dictionary sows that the vowels “AE” at the beginning of a word may be pronounced either as a long “a” or long “e” sound. See http://www.merriam-webster.com/words-at-play/how-to-pronounce-ae-in-english-words-diphthong. And the attached evidence from Howtopronounce.com shows that ATHOS may also be pounced with and “AE” combination sound at the beginning of the term. See http://www.howtopronounce.com/athos. Thus, the marks are highly similar if not identical in terms of pronunciation. Accordingly, the marks are confusingly similar.
Relatedness of the Goods
Next, the goods 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).
In this case, applicant’s bicycles and bicycle frames are highly related to registrant’s tires for vehicles. The attached definition from the Merriam Webster Dictionary shows that a “vehicle” is “a means of carrying or transporting something.” See http://www.merriam-webster.com/dictionary/vehicle. Thus, a bicycle is a type of vehicle. And, the attached Internet evidence consisting of screenshots of State Bicycle Co., Trek, and Schwinn products establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. See http://www.trekbikes.com/us/en_US/bikes/mountain-bikes/fat-bikes/farley/farley-c-frameset/p/24502/?colorCode=reddark, http://www.trekbikes.com/us/en_US/bikes/c/B100/?pageSize=24&q=%3Arelevance%3AnewFlag%3ANEW#, http://www.trekbikes.com/us/en_US/equipment/cycling-components/bike-tires/road-bike-tires/bontrager-r1-hard-case-lite-road-tire/p/25927/?colorCode=black, http://www.statebicycle.com/collections/city-bikes-1/products/the-elliston-deluxe, http://www.statebicycle.com/collections/tires-tubes/products/tire-set, http://www.statebicycle.com/collections/frames, http://www.schwinnbikes.com/collections/road-bikes/products/volare-1400-mens-road-bike, http://www.target.com/p/kenda-schwinn-tire-26-x-1-3-4-clincher-wire-black-22tpi/-/A-76831410. Accordingly, when consumers encounter bicycles, bicycle frames, and tires sold under the same mark, they are likely to be confused as to the source of the goods. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
For the forgoing reasons, the marks create substantially similar commercial impressions and the goods are related such that they are likely to be encountered in the marketplace by the same consumers. Therefore, registration of the applied for mark is refused based on Section 2(d) of the Trademark Act.
INFORMATION ABOUT MARK REQUIRED
Alternatively, if the wording has no meaning in a foreign language, applicant should provide the following statement: The wording “AETHOS” has no meaning in a foreign language.
Id.
RESPONSE AND ASSISTANCE
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.
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/Rebecca Eubank/
Rebecca Eubank
Examining Attorney
Law Office 116
571-270-5577
rebecca.eubank@uspto.gov
RESPONSE GUIDANCE