To: | Bowtech, Inc. (pto-kc@huschblackwell.com) |
Subject: | U.S. Trademark Application Serial No. 90004796 - SOLUTION - 548812.10036 |
Sent: | January 12, 2021 05:15:22 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90004796
Mark: SOLUTION
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Correspondence Address:
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Applicant: Bowtech, Inc.
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Reference/Docket No. 548812.10036
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: January 12, 2021
This Office action is in response to applicant’s communication filed on December 8, 2020.
In a previous Office action dated September 18, 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 response, Applicant has provided arguments against the Trademark Act Section 2(d) Refusal. These arguments and evidence have been examined and found unpersuasive. As a result, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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
Applicant’s mark is SOLUTION in standard characters for “archery equipment, namely, bows” in International Class 28. Registrant’s mark is SOLUTION in standard characters for “Sporting goods, namely, basketballs, backboards for basketball, basketball goal sets, basketball goals, and basketball nets” in International Class 28.
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).
In the present case, applicant’s mark is SOLUTION and registrant’s mark is SOLUTION. 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.
Relatedness of the Goods
In this case, in addition to the newly attached evidence showing a single source, Escalade Sport, offers both the goods identified in the application alongside the goods identified in the registration, the previously attached Internet evidence from Dicks Sporting Goods, Big Five Sporting Goods, and Academy Sporting Goods as well as the newly attached evidence from Scheels and Dunham’s establishes 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. Thus, applicant’s and registrant’s goods and/or services 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).
Conclusion
Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
As Applicant’s and Registrant’s marks are identical and their goods relate, registration of the applied-for mark must be refused under Trademark Act Section 2(d).
APPLICANT’S ARGUMENT IN RESPONSE
In response, Applicant argues, (1) the goods differ, (2) the trade channels differ, and (3) Applicant’s consumers are sophisticated.
In support of Applicant’s first point, Applicant argues that their goods are fundamentally different from the goods of the registrant. However, as noted above, a number of manufacturers provide both goods under the same mark, consumers are likely to encounter both goods in the same store, and when the marks are identical, as in thecurrent case, the degree of similarity or relatedness between the goods needed declines.
In support of Applicant’s second point, Applicant argues that the only evidence that has been provided is that of “big box stores”. However, as the substantial evidence above establishes, majority if not all sporting goods stores of note sell both of these goods in the same store to the same consumers. Applicant has provided no evidence that the goods of Applicant or registrant are so specialized so as not to be sold commonly at sporting goods stores. Nor does either Applicant or Registrant specify in their identification of goods that their goods travel in a trade channel which differs from that of sporting goods stores.
To Applicant’s third argument, Applicant has not provided any evidence that their goods are of such a type or targeted to consumers that are sophisticated or are likely to exercise a high degree of care on the level of trucks as was the case in In re Thor Tech, Inc. 113 USPQ2D 1546, 1551 (TTAB 2015)
As Applicant’s arguments have been examined and found unpersuasive and Applicant has provided no evidence in support of their arguments, the refusal under Trademark Act Section 2(d) must be CONTINUED AND MADE FINAL.
RESPONSE GUIDELINES
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 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).
Riso, Mark
/Mark Riso/
Trademark Examining Attorney
Law Office 108
(571)272-0167
Mark.Riso@uspto.gov
RESPONSE GUIDANCE