To: | Choice Brands Unlimited, LLC (msmolow@smolowlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88929061 - DEFENDER - 281.007 |
Sent: | August 10, 2020 03:02:19 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88929061
Mark: DEFENDER
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Correspondence Address:
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Applicant: Choice Brands Unlimited, LLC
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Reference/Docket No. 281.007
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: August 10, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is DEFENDER, for “Equestrian supplies, namely, fly Turnout sheets; stable sheets; stable blankets; turnout blankets; coolers; dress sheets; fleece liners; fly masks; fly boots; fly sheets; horse coats; dog blankets; tail bags; mane tamers; horse clothing bags; protective boots, splints, and wraps; totes; bagshors”, in Class 18 and “Equine grooming supplies, namely, brushes; braiding; clippers; detanglers; conditioners; polish and shine; shampoo; skin and coat treatment”, in Class 21.
Registrant’s mark is DEFEND, for, “Jewelry; jewelry products, namely, jewelry; precious stones; timepieces and chronometric instruments; precious metals and their alloys; works of art of precious metal; jewelry cases; jewelry caskets; boxes of precious metal; watch cases, watch bracelets, watch chains, watch springs, and watch glasses; Key rings in the nature of trinkets or fobs of precious metal; statues, figurines, and statuettes of precious metals; cases or presentation cases for timepieces; medals”, in Class 14 and “Leather and imitation leather; animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips, harness and saddlery; wallets; purses, namely, coin purses; bags, namely, bags for sports, athletic bags, book bags, carry-all bags, carry-on bags; vanity cases sold empty; collars or clothing for animals; net bags for shopping, namely, mesh shopping bags”, in Class 18.
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. 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.
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).
Here, applicant’s mark DEFENDER wholly incorporated registrant’s mark DEFEND, with applicant’s mark merely adding the comparative suffix –ER to the end of registrant’s mark. Thus, the marks sound and appear similar, and convey a similar commercial impression. The marks have their differences, however, these differences do not obviate the likelihood of confusion.
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).
Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part, as applicant’s mark DEFENDER merely modifies registrant’s mark DEFEND with a suffix, -ER. Thus, the overall commercial impression of both marks is similar, namely, protecting or preventing something from occurring.
Thus, when compared in their entireties, the marks are confusingly similar.
In this case, the registration uses broad wording to describe “collars or clothing for animals”, which presumably encompasses all goods of the type described, including applicant’s more narrow “fly turnout sheets; stable sheets; stable blankets; turnout blankets; coolers; dress sheets; fleece liners; fly masks; fly boots; fly sheets; hourse coats; dog blankets.” 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). Thus, applicant’s and registrant’s 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 registrant’s goods are related.
Use of the confusingly similar marks in relation to the related goods would lead to a likelihood of confusion. Accordingly, given the similarity of applicant’s mark to registrant’s mark, and the related nature of the goods those marks identify, there is a likelihood of source confusion. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIREMENT
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Various wording in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the wording does not make clear the common, commercial name of the goods as well as the fact that the goods are intended for horses.
However, the proper classification for each item is as follows:
Class 03: detanglers, conditioners, polish and shine, shampoo
Class 05: skin and coat treatment
Class 08: clippers
Class 10: protective boots, splints
Class 24: Dog blankets
Class 26: braiding
Additionally, applicant has provided the application fee(s) for only 2 international classes. Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international classes to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international classes for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Applicant may substitute the following wording, if accurate, with changes highlighted and in bold:
Class 03: Horse hair detangler preparations; non-medicated and non-veterinary grooming preparations in the nature of horse shampoo and horse conditioner; non-medicated grooming preparations for horses, namely, hair polish and shine detangling preparations
Class 05: Skin and coat treatment, namely, sore skin ointment for horses
Class 08: Nail clippers for horses
Class 10: Veterinary protective boots for horses after a surgical procedure; splints for horses
Class 18: Equestrian supplies, namely, fly turnout sheets; stable sheets being horse quarter sheets; stable blankets being horse blankets; turnout blankets for horses; coolers, specifically, cooling blankets for horses; dress sheets being
horse fly sheets; fleece liners being horse blankets; fly masks for horses; fly equine boots; horse fly
sheets; horse coats; dog blankets; horse tail bags; mane tamers; horse clothing bags for travel; protective boots, splints, and horse wraps; tote bags; bagshors, namely, {insert common, commercial
name of goods, and if applicable, reclassify the goods in its proper class}
Class 21: Equine grooming supplies, namely, brushes; braiding; clippers; detanglers; conditioners; polish and shine; shampoo; skin and coat
treatment
Class 24: Dog blankets
Class 26: Synthetic braiding hair
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 8 classes; however, applicant submitted fees sufficient for only 4 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Josh Galante/
Joshua M. Galante
Trademark Examining Attorney
Law Office 127
571-272-4310
Josh.Galante@uspto.gov
RESPONSE GUIDANCE