Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  October 05, 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.

 

 

SUMMARY OF ISSUES:

• Partial Section 2(d) Refusal – Likelihood of Confusion
• Translation Amendment – Required
• Teas Plus Status Lost – Fee Required
• Representative Specimens – Required

 

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS REFUSAL PERTAINS ONLY TO THE GOOD DISCUSSED HEREIN.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5793500 & 2950812.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is FENIX presented in standard character form, for use with the following applied-for goods:

 

Class 028: Abdomen protectors for athletic use; Athletic supporters; Body-building apparatus; Elbow pads for athletic use; Fishing harnesses; Fishing tackle; Knee pads for athletic use; Leg guards for athletic use; Swimming belts; Swimming jackets; Wrist guards for athletic use

 

The registered marks are as follows:

 

·       U.S. Reg. No. 5793500 PHENIX presented in standard character form, for use with the following registered goods:

 

Class 028: Fishing lines; Fishing lures; Fishing plugs; Fishing poles; Fishing reels; Fishing rod blanks; Fishing rod cases; Fishing rod handles; Fishing rods; Fishing tackle; Artificial fishing lures; Lines for fishing; Reels for fishing; Rods for fishing

 

·       U.S. Reg. No. 2950812 PHOENIX presented in special form with an oval background, for use with the following goods related to this refusal:

 

Class 028: footballs; volleyballs; volleyball nets; skateboards; skateboard wheels sold as a unit with skateboards; skateboard wheels sold separately; swim masks; snorkels; swim goggles; swim fins; swim boards for recreational use; swim floats for recreational use; protective padding for playing football and volleyball; protective padding for skateboarding; elbow pads, knee pads, and wrist pads for athletic use

 

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. 

 

Comparison of Marks

 

Regarding the first prong of the test, a comparison must be made between applicant’s applied-for mark FENIX and the registered mark(s) PHENIX presented in standard character form (5793500) and PHOENIX presented in special form with an oval design (2950812).

 

In a likelihood of confusion determination, 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 FENIX, and the registered marks PHOENIX and PHENIX are phonetically equivalent marks. The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Moreover, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv).  The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Additionally, regarding applicant’s mark FENIX and registrant’s mark PHOENIX, applicant’s mark and registrant’s literal elements are not only phonetically equivalent, but are also foreign equivalent that connote the same meaning of “PHOENIX”. Indeed, the attached dictionary and translation evidence demonstrates that applicant’s term FENIX indeed means PHOENIX in Spanish.  Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

Indeed, applicant’s mark is in Spanish, which is a common, modern language in the United States.  See Ricardo Media, Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) (Spanish). The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024. In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States. 

 

Moreover, registrant’s PHOENIX mark appears in special form, with merely an oval carrier background. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Similarly, applicant’s mark appears in standard character form, which may be depicted in a stylization identical or similar to the registered marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods and services despite minor differences in the marks.

 

Comparison of Goods/Services

 

Regarding the second prong of the test, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Further, the compared goods and/or services 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).

 

Regarding U.S. Reg. No. 5793500 PHENIX

 

Here, applicant’s goods at issue are “Fishing harnesses; Fishing tackle” and registrant’s goods at issue are “Fishing lines; Fishing lures; Fishing plugs; Fishing poles; Fishing reels; Fishing rod blanks; Fishing rod cases; Fishing rod handles; Fishing rods; Fishing tackle; Artificial fishing lures; Lines for fishing; Reels for fishing; Rods for fishing.”

 

In this case, applicant’s and registrant’s “fishing tackle” goods are identical.  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.  

 

Moreover, applicant’s “fishing harnesses” and registrant’s “fishing tackle” are both fishing products that are sold in the same channels of trade to the same consumer. Indeed, 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 and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely fishing tackle and fishing harnesses 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).

 

Regarding U.S. Reg. No. 2950812 PHOENIX

 

Here, applicant’s goods at issue are “Abdomen protectors for athletic use; Athletic supporters; Body-building apparatus; Elbow pads for athletic use; Knee pads for athletic use; Leg guards for athletic use; Swimming belts; Swimming jackets; Wrist guards for athletic use” and registrant’s goods at issue are “footballs; volleyballs; volleyball nets; skateboards; skateboard wheels sold as a unit with skateboards; skateboard wheels sold separately; swim masks; snorkels; swim goggles; swim fins; swim boards for recreational use; swim floats for recreational use; protective padding for playing football and volleyball; protective padding for skateboarding; elbow pads, knee pads, and wrist pads for athletic use.”

 

In this case, applicant’s and registrant’s goods of “elbow pads for athletic use” and “knee pads for athletic use” are identical. 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.  

 

Moreover, the rest of applicant’s swimming goods and athletic supports and guards and registrant’s swim goods and protective padding are all swimming or athletic protection gear that are sold in the same channels of trade to the same consumer. Indeed, 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 and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely athletic supports and swimming belts and jackets and swimming floats and masks 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).

 

Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the goods and services are related and originate from a single source. As such, registration is herein refused registration under Section 2(d) of the Trademark Act.

 

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

 

If applicant responds to this issue, applicant must also address the issue(s) discussed below.

 

 

TRANSLATION AMENDMENT – REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of all wording in the mark because it is foreign wording.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “FENIX” is “PHOENIX”.  TMEP §809.03.  See attached translation evidence.

 

If applicant responds to this issue, applicant must also address the issue(s) discussed below.

 

 

TEAS PLUS STATUS LOST – FEE REQUIRED

 

Processing fee required.  Applicant must submit an additional processing fee of $125 per class because the application as originally filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04.  Specifically, applicant failed to meet the following requirement(s):  a translation of all non-English wording in the mark was not provided. In fact, applicant improperly noted that the term has no meaning.The additional processing fee is required regardless of whether applicant satisfies these application requirements.

 

Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application.  See 37 C.F.R. §2.22(c); TMEP §819.04.

 

The fee for adding classes to a TEAS Plus application is $225 per class.  See 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.03.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

If applicant responds to this issue, applicant must also address the issue(s) discussed below.

 

 

REPRESENTATIVE SPECIMENS – REQUIRED

 

Applicant has applied for a multitude of goods and/or services in International Class 028.  Note that if an identification is so broad that it encompasses a wide range of products and services, the applicant must submit evidence that it actually uses the mark on a wide range of products and services to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.

 

Applicant must submit a proper specimen for each of the following groups of goods and/or services:

 

1. Board Game: Checkerboards;
2. Puppet: Puppets;
3. Puzzle: Puzzles;
4. Swing: Swings;
5. Athletic Protector: Abdomen protectors for athletic use; Athletic supporters; Elbow pads for athletic use; Knee pads for athletic use; Leg guards for athletic use; Wrist guards for athletic use.
6. Body Building: Body-building apparatus;
7. Christmas: Christmas tree ornaments and decorations;
8. Fishing: Fishing harnesses; Fishing tackle;
9. Babies: Infant toys;
10. Pets: Pet toys;
11. Swimming: Swimming belts; Swimming jackets;
12. Playthings: Toy cars; Toy masks;
13. Robots: Toy robots

 

Please note that applicant should delete all identifications of goods and/or services pertaining to goods and/or services that are not yet in use in commerce.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

 

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 October 05, 2020 for

U.S. Trademark Application Serial No. 90017731

 

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. 

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

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 October 05, 2020, 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.”