United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88955693
Mark: TITAN
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Correspondence Address:
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Applicant: Jasco Products Company LLC
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Reference/Docket No. N/A
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: September 16, 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
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.
Here, the applicant applied to register the mark TITAN for audio cables; electrical power extension cords; headsets for use with computers; surge protectors; USB cables; video cables; component video cables; computer keyboard controllers; computer mice; consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters; micro USB cables; virtual reality headsets; wearable computer peripherals in the nature of wireless mice; wireless computer mice in International Class 9 and controllers for game consoles; audio and visual headsets for use in playing video games; gaming headsets adapted for use in playing video games; gaming mice in International Class 28.
The registered marks are TENNESSEE TITANS for football helmets, decorative magnets, pre-recorded DVD's featuring the sport of football, computer game software and disks, mouse pads in International Class 9 and jewelry, watches, clocks, pins, earrings, necklaces, charms, collectible coins, coins of precious metal, pendants and key chains made of precious metal in International Class 14; TITAN for audio equipment for vehicles, namely, speakers, amplifiers, and speaker mounting adapters in International Class 9; GT GAMA TITAN and GT GAME TITAN, both for batteries, electric; computer game programs; computer keyboards; computer mouse; computer network adapters, switches, routers and hubs; computer peripheral devices; electronic chips for the manufacture of integrated circuits; memory cards for video game machines; portable media players; video game cartridges in International Class 9; TITAN for electric cable protectors, namely, polyurethane floor covers and protectors in the nature of sheaths designed to be used to protect and cover electrical cables on the ground; electric cable protectors, namely, polyurethane floor covers and protectors designed to be used to protect and cover electrical cables on the ground in International Class 9 and modular electric cable protectors, namely, modular polyurethane floor covers and protectors designed to be used to protect and cover electrical cables on the ground in International Class 20; TITAN for microphone stands, stands specially adapted for audio speakers; microphones, audio speakers in International Class 9 and stands for use in a musical setting, namely, musical instrument stands, sheet music stands; musical instrument stands for cymbals, drums, band and orchestra instruments in International Class 15; and TITANFORMULA for audio cables; audio speakers; microphones; sound reproducing apparatus; sound systems comprising remote controls, amplifiers, loudspeakers and components therefor; amplifiers; loudspeaker systems; stands adapted for stereos and audio speakers in International Class 9.
Similarity of the Marks
U.S. Registration Nos. 4728544, 4916551 and 5186966
In the present case, applicant’s mark is TITAN and registrants’ marks in U.S. Registration Nos. 4728544, 4916551 and 5186966 is TITAN. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
U.S. Registration Nos. 3261094, 5089562, 5146161 and 5685174
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In the instant case, the dominant portion of the mark is TITAN. The deletion of the term(s)/lettering TENNESSEE, GT GAMA, GT GAME and FORMULA from the registered marks in U.S. Registration Nos. 3261094, 5089562, 5146161 and 5685174 does not distinguish it from the registered marks.
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 mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.
Relationship Between the Goods
U.S. Registration Nos. 4728544, 5089562, 5146161 and 5685174
In this case, the goods in the application and registrations are identical in part as both are providing computer mice to consumers in regard to U.S. Registration Nos. 5089562 and 5146161, both are providing audio speakers to consumers in regard to U.S. Registration No. 4728544 and both are providing cables, speakers and amplifiers with regard to U.S. Registration No. 5685174. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
U.S. Registration Nos. 4916551
In this case, the application uses broad wording to describe speakers and amplifiers, which presumably encompasses all goods of the type described, including registrant’s more narrow identification of vehicle speakers and amplifiers. 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 and/or services 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 and/or services are related.
U.S. Registration Nos. 3261094 and 5186966
Here, the applicant’s goods and the registrant’s goods are highly related and complementary. The goods would be found in the same channels of trade and would be available to the same potential consumers.
Accordingly, since there is no overriding factor to distinguish applicant’s mark from the marks already registered, registration must be refused because the average purchaser would be likely to conclude that the applicant’s goods and those cited in U.S. Registration Nos. 3261094, 4916551, 5089562, 5186966, 4728544, 5146161 and 5685174 emanate from a common source of origin.
Application Not Entitled To Register
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Action on this application will be suspended pending the disposition of Application Serial Nos. 76716257, 79126700, 87923167, 88275635, 88275649, 88573287, 88299426 and 88938685, upon receipt of the applicant’s response resolving the Section 2(d) refusal based upon the registered marks. The applicant must respond to the Section 2(d) refusal based upon the registered marks discussed previously herein within six months of the issue/mailing date of this Office Action to avoid ABANDONMENT.
How to respond. Click to file a response to this nonfinal Office action.
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.
/Andrea Koyner Nadelman/
Trademark Examining Attorney
U.S. Patent and Trademark Office, Law Office 110
(571) 272-9370
andrea.nadelman@uspto.gov
RESPONSE GUIDANCE