To: | Specialized Bicycle Components, Inc. (tm-dept@quarles.com) |
Subject: | U.S. Trademark Application Serial No. 88792226 - AETHOS - 167611.tbd |
Sent: | August 20, 2020 08:53:15 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 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 |
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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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: August 20, 2020
This Office action is in response to applicant’s communication filed on July 30, 2020.
In a previous Office action dated May 5, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: clarify if the mark has an English translation.
Based on applicant’s response, the trademark examining attorney notes that the translation requirement has been satisfied. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal 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
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).
As previously discussed, 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 or identically. The previously attached evidence from the Meriam Webster Dictionary shows that the vowels “AE” at the beginning of a word may be pronounced either as a long “a” or long “e” sound. And the previously attached evidence from Howtopronounce.com shows that ATHOS may also be pounced with and “AE” combination sound at the beginning of the term. Thus, the marks are highly similar if not identical in terms of pronunciation.
Applicant Argues the Marks are Dissimilar
In the response, applicant argues that the marks differ in appearance. Applicant argues that the “AE” combination of letters is uncommon in the English language, therefore the applied-for mark distinctively is dissimilar from the registered mark. The “AE” letter combination at the beginning of words is not uncommon. English terms including “Aerospace”, “Aerosol”, “Aerobic”, “Aesthetics”, “Aeration”, “Aerial”, “Aegis”, and “Aerodynamics” are not uncommon terms that all begin with an “AE” letter combination. And, as discussed, the applied-for and registered mark differ visually by only one letter. Thus, the marks are visually similar.
Applicant also argues that the applied for mark will be pronounced only with a long “e” sound. However, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such 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). The previously attached evidence from Meriam Webster Dictionary and Howtopronounce.com shows that the “AE” combination at the beginning of the applied-for mark may be pronounced in the same way as the registered term ATHOS. Thus, the marks are similar in terms of sound.
Finally, applicant argues that because the applied-for mark is pounced as “ethos” the mark creates the “impression of a distinguishing moral or belief.” July 30, 2020 Response to the Office Action p. 16. The applied-for mark is not “ethos.” It is AETHOS. Thus, it is unclear why consumers would extrapolate the suggested meaning of a different term form applicant’s mark.
For the forgoing reasons, 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).
As previously discussed, applicant’s bicycles and bicycle frames are highly related to registrant’s tires for vehicles. The previously attached definition from the Merriam Webster Dictionary shows that a “vehicle” is “a means of carrying or transporting something.” Thus, a bicycle is a type of vehicle.
Further, in addition to the previously attached Internet evidence from State Bicycle Co., Trek, and Schwinn, the newly attached evidence from Surly, Ibis, and Chromag establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. See http://surlybikes.com/parts/tires, http://surlybikes.com/parts/hubs_and_rims, http://surlybikes.com/bikes/cross_check, http://www.ibiscycles.com/wheels, http://www.ibiscycles.com/wheels/all-wheels-rims, http://www.ibiscycles.com/bikes, http://chromagbikes.com/collections/bikes/current, http://chromagbikes.com/collections/rims-wheels. 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).
Applicant Argues the Goods are Unrelated
In the response, applicant argues that the goods are different and are used for different purposes. However, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. As stated, the relevant inquiry is whether the goods are related, not identical. The evidence discussed above indicates that the identified goods are commonly manufactured and provided by the same source. Thus, the goods are related for likelihood of confusion purposes.
Applicant also argues that the goods travel in different channels of trade and offers extrinsic evidence supporting this argument. However, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). In this case, the identifications 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)).
Finally, applicant argues that the purchases for the respective goods are sophisticated and the goods are expensive, thus consumers are likely to recognize and differentiate the marks. Even if consumers of the compared goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). Further, the likelihood of confusion analysis is made based on the marks shown in the drawings and the goods identified by the application and registration. In this case, the goods identified encompass goods at a variety of price points, as applicant has stated. Consumers of lower cost bicycle components and bicycle tires may well be confused as to the source of the goods sold under nearly identical marks.
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, the refusal to register the applied-for mark under Section 2(d) of the Trademark Act is now 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).
/Rebecca Eubank/
Rebecca Eubank
Examining Attorney
Law Office 116
571-270-5577
rebecca.eubank@uspto.gov
RESPONSE GUIDANCE