Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 08, 2021

 

 

Introduction

 

This Office action is in response to applicant’s communication filed on December 17, 2020.

 

In a previous Office action dated June 17, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) refusal for a likelihood of confusion with two registered marks.  In addition, applicant was required to satisfy the following requirements:  amend the identification and classification of goods, and comply with multiple-class application requirements.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification and classification of goods, and comply with multiple-class application requirements.  See TMEP §§713.02, 714.04. 

 

Applicant presented arguments regarding the Section 2(d) refusal, but these arguments were found unpersuasive for the reasons described below.  Therefore, 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. All previous arguments and evidence, where applicable, are incorporated by reference herein.

 

Summary of Issues Made Final That Applicant Must Address:

 

• FINAL Section 2(d) Refusal – Likelihood of Confusion – Maintained and Made Final

 

FINAL Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5718786 (BOXIQ) and 5718787 (LOXIQ).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Applicant has applied for the mark IQ in standard characters for:

• “Lock boxes for use in residential bathroom cabinets” in International Class 6; and
• “residential bathroom cabinets containing specially adapted lock boxes incorporated within the cabinet” in International Class 20.

 

Registration No. 5718786 is BOXIQ in standard characters for “Lock cylinders of metal; Lock installation kit consisting of metal lock, screws, hinges, and a screwdriver; Locks of metal, other than electric; Bicycle locks; Holder in the nature of a portable, flexible arm composed primarily of metal with a pressure lock system having the ability to attach to most flat surfaces and used to hold various household-related appliances during use; Lockboxes; Metal lock boxes; Metal locks; Metal locks and keys therefor; Metal ball lock pins; Metal bicycle locks; Metal components for metal protective and security window shutters, namely, slats, shutterboxes, side frames, end caps, crank handles, pull straps, side tracks, ball bearings and installation hardware, namely, rollers, rails, cables, carriers, pins, locks, clips, brackets and screws; Metal keys for locks; Metal multi-point locking system in a wood door; Metal sash locks; Metal security lock cylinders; Non-metal lock boxes; Small items of metal hardware, namely, high security locks and sheet metal plates primarily for the casino and gaming industry; Spring locks of metal, other than electric” in International Class 6, amongst other goods.

 

Registration No. 5718787 is LOXIQ in standard characters for “Lock cylinders of metal; Lock installation kit consisting of metal lock, screws, hinges, and a screwdriver; Locks of metal, other than electric; Bicycle locks; Holder in the nature of a portable, flexible arm composed primarily of metal with a pressure lock system having the ability to attach to most flat surfaces and used to hold various household-related appliances during use; Lockboxes; Metal lock boxes; Metal locks; Metal locks and keys therefor; Metal ball lock pins; Metal bicycle locks; Metal components for metal protective and security window shutters, namely, slats, shutterboxes, side frames, end caps, crank handles, pull straps, side tracks, ball bearings and installation hardware, namely, rollers, rails, cables, carriers, pins, locks, clips, brackets and screws; Metal keys for locks; Metal multi-point locking system in a wood door; Metal sash locks; Metal security lock cylinders; Non-metal lock boxes; Small items of metal hardware, namely, high security locks and sheet metal plates primarily for the casino and gaming industry; Spring locks of metal, other than electric” in International Class 6, amongst other goods.

 

Comparison of the Marks

 

Applicant’s mark and the cited U.S. Registration Nos. 5718786 (BOXIQ) and 5718787 (LOXIQ) are likely to be confused due to their similarity.

 

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 correctly notes that marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . 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.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

In the present case, there is a likelihood of confusion because of the shared wording in the marks.  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).  Here, the marks share the wording “IQ”, creating a similar commercial impression centered on the concept of “IQ” or “intelligent quotient” (see previously attached definition from lexico.com).

 

Applicant argues that “the Cited Marks contain additional, distinguishing elements – ‘BOX’ and ‘LOX’ – that are not contained in Applicant’s mark.  These additional elements convey an overall different commercial impression…Specifically, the ‘BOX’ and ‘LOX’ refer to the locking systems offered under the Cited Marks.  Applicant’s mark does not communicate a similar message to consumers”.  However, while the registered marks contain additional wording, this does not prevent a likelihood of confusion.  Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark 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 the registered marks because it contains some of the wording in the registered marks (“IQ”) and does not add any wording that would distinguish it from those marks.

 

Further, the specimens provided for the registered marks (see attached) show that the marks are displayed as “LoxIQ” and “BoxIQ” on the goods.  Therefore, there is different capitalization used for “Box” and “Lox” (which both are comprised of lower case letters, except for the first capitalized letter) as compared to “IQ” (which is presented in all capital letters).  This stylization emphasizes that each registered mark is presented to consumers as a combination of two separate words, namely “Box” and “IQ” or “Lox” and “IQ”.  Therefore, the wording “IQ” is presented as a separate part of each registered mark. 

 

Further, even if potential purchasers realize the apparent differences between applicant’s and registrant’s marks, they could still reasonably assume, given the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant's goods provided under the applicant’s mark constitute a new or additional goods line from the same source as the goods sold under the registrants’ marks with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark.  See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).  As discussed above, the wording “IQ” is emphasized in the registered marks through capitalization, thus establishing “IQ” as a term to which “Lox” or “Box” have been added.  Consumers could assume that applicant’s goods under the IQ mark are produced by the same “IQ” brand that also potentially produces the “BoxIQ” and “LoxIQ” products, where “BoxIQ” and “LoxIQ” could refer to different product lines under the “IQ” brand. This is especially likely given that applicant’s and registrants’ goods are highly related and/or legally identical.

 

Finally, where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).  As discussed below, applicant’s and registrants’ goods are highly related and/or legally identical.  Therefore, a lesser degree of similarity between the marks is required to support a finding of likelihood of confusion in this case.

 

Therefore, as the marks look and sound similar and create a similar commercial impression, they are confusingly similar.

 

Comparison of the Goods

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant argues that “the products offered under the parties’ respective marks are different and unrelated.  Applicant makes and sells bathroom furniture…In contrast, the goods under the Cited Marks are used with a commercial door access system”, and applicant has provided screenshots of applicant’s and registrants’ websites showing the goods discussed on those websites.  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 registrations use broad wording to describe the goods (“Lockboxes”), which presumably encompasses all goods of the type described, including applicant’s more narrow goods (“Lock boxes for use in residential bathroom cabinets”).  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Specifically, registrants’ “Lockboxes” can encompass lockboxes of all types, including lock boxes for use in residential bathroom cabinets.  Thus, applicant’s and registrants’ goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods 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)).  Thus, applicant’s and registrants’ goods are related.

 

Further, as shown from the attached websites from barska.com, faucetdirect.com, houzz.com, innovativeclosetdesigns.com, ketchamcabinets.com, us.kohler.com, medicus-health.com, pbteen.com, and villeroy-boch.com, it is quite common for the same parties to sell lockboxes and cabinets under the same mark; this evidence also shows that lockboxes and cabinets specially adapted for lockboxes are complementary in purpose or function.  This evidence establishes that the same entity commonly provides the relevant goods and and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function.  Specifically, this evidence shows that goods like applicant’s “residential bathroom cabinets containing specially adapted lock boxes incorporated within the cabinet” are specially adapted for registrants’ “Lockboxes”, and thus registrants’ “Lockboxes” are complementary to the purpose/function of applicant’s cabinets that are intended to hold lockboxes in order to securely hold objects.  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).

 

Also, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely lock boxes, locks, and cabinets, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Therefore, the goods are considered related in this analysis.

 

Because the marks are similar and the goods are related, there is a likelihood of confusion and applicant’s mark is not entitled to registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the final refusal by submitting evidence and arguments in support of registration.

 

Advisory – Response to Final Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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).

 

 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

571-272-4031

Jessica.Hilliard@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 08, 2021 for

U.S. Trademark Application Serial No. 88866352

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

571-272-4031

Jessica.Hilliard@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 08, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”