United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90014291
Mark: RECOBLOX
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Correspondence Address: |
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Applicant: Regents of the University of Michigan
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Reference/Docket No. 14040-330
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 10, 2020
SEARCH OF USPTO DATABASE OF MARKS
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. 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 and differences in the marks.”); TMEP §1207.01.
In the present case, the applied-for mark is RECOBLOX in standard characters for use with “Concrete blocks” in International Class 19.
The registered mark is RECO in standard characters for use, in relevant part, with “Wall panels not of metal; non-metal panels for cladding interior walls of buildings; non-metal profiles for use with wall panels not of metal; non-metal profiles for use in building and construction; non-metal profile components, namely, profile sections, for use for use with wall panels not of metal; non-metal profile components, namely, profile sections, for use in building purposes; waterproofing membranes for such goods, namely, wall panels not of metal; nonmetal panels for cladding interior walls of buildings; mastics in the nature of sealants for use with panels not of metal and non-metal panels for cladding interior walls of buildings” in International Class 19.
COMPARISON 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).
Here, the applied-for mark is RECOBLOX in standard characters. The registered mark is RECO in standard characters.
Moreover, 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). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Here, the attached evidence shows that the wording “blox” is the phonetic equivalent of the word “blocks” and commonly used to replace the word “blocks”. As shown in the identification of goods in the application, the wording “BLOX” in the applied-for mark is merely descriptive of and generic for applicant’s concrete blocks goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the first wording “RECO” the more dominant element of the mark.
Accordingly, the applied-for mark merely adds descriptive and generic wording to the registered mark. 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 this case, the marks are identical in part.
In particular here, the first wordings in the marks, “RECO”, are identical and the applied-for mark does not add sufficient wording to change the commercial impression nor meaning of the mark from “RECO”. Therefore, the marks 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 and/or services] 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).
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)).
Here, the applied-for mark is for use with “Concrete blocks” in International Class 19.
The registered mark is for use, in relevant part, with “Wall panels not of metal; non-metal panels for cladding interior walls of buildings; non-metal profiles for use with wall panels not of metal; non-metal profiles for use in building and construction; non-metal profile components, namely, profile sections, for use for use with wall panels not of metal; non-metal profile components, namely, profile sections, for use in building purposes; waterproofing membranes for such goods, namely, wall panels not of metal; nonmetal panels for cladding interior walls of buildings; mastics in the nature of sealants for use with panels not of metal and non-metal panels for cladding interior walls of buildings” in International Class 19.
Applicant and registrant both provide types of building materials. The attached Internet evidence from Menards, General Shale, Palmetto Brick, Nitterhouse, Caroll’s, Cemex, and Wall Theory establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark, and that the relevant goods are sold 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 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).
Because the marks are the confusingly similar and the goods are related, there is a likelihood of confusion and registration is refused.
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.
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/Rebecca T. Caysido/
Trademark Examining Attorney
Law Office 123
571-270-0926
Rebecca.Caysido@uspto.gov
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