To: | Hilltop Bicycles, LLC (jwmccabe1@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90039430 - HB - HB-001 |
Sent: | November 12, 2020 03:58:26 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90039430
Mark: HB
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Correspondence Address:
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Applicant: Hilltop Bicycles, LLC
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Reference/Docket No. HB-001
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: November 12, 2020
PRIOR-PENDING APPLICATIONS – ADVISORY
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2566969 (H B SPORT HARBOR BAY), 4555902 (HB HALFBEAST), and 5748000 (HB). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant has applied to register the mark HB in standard characters for “Retail store services featuring road and mountain bicycles and parts and accessories therefore, road and mountain bicycle wheels, rims and structural parts therefor, road and mountain bicycle tires and inner tubes, road and mountain bicycle helmets, road and mountain bicycle seats and saddles, clothing for use while road and mountain cycling, namely, gloves, jerseys, one-piece suits, outerwear, protective clothing, bike shorts, shirts, shoes, socks and undergarments, skin care products for use while road and mountain cycling, namely, soap, antiseptics, ointments and skin protectants, degreasers, eyewear, sports drink powders, energy bars, gels and chews; Retail road and mountain bicycle stores” in International Class 35.
Registrants’ marks are as follows:
1. H B SPORT HARBOR BAY in stylized form for “Clothing, namely, pants, shirts, socks, underwear, belts, footwear, jackets, swimwear” in International Class 25.
2. HB HALFBEAST in stylized form for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms” in International Class 25.
3. HB in stylized form for “Protein dietary supplements; dietary supplement drink mixes; mineral food supplements; powdered fruit-flavored dietary supplement drink mixes; powdered nutritional supplement drink mixes; dietary supplements consisting of vitamins; dietary supplement drinks; dietary supplements; dietetic food supplements; vitamin preparations in the nature of food supplements; dietary supplements consisting of amino acids; zinc dietary supplements; liquid vitamin supplements; liquid herbal supplements; nutritional supplements; dietary supplements consisting primarily of iron; casein dietary supplements; dietary supplements consisting primarily of calcium; dietary supplements for controlling cholesterol; soy protein dietary supplements” in International Class 5; “Sweat suits; leggings; wristbands as clothing; sweatbands; sweat shirts; sweat pants; sports vests; sports overcoats; sports wear, namely, sports pants, sports jerseys, sports bra, sports shirts, sports over uniforms, sports jackets, sports singlets, sports shoes, sports shirts with short sleeves, sleeveless jerseys, sport stockings, leotards; sports jackets; athletic pants; athletic skirts; athletic uniforms; training shoes; warming-up sportswear, namely, warm up outfits, warm-up suits; windjammers; gloves including those made of skin, hide or fur; training suits; headbands; hoods” in International Class 25.
See enclosed registrations.
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).
Registration Nos. 2566969 (H B SPORT HARBOR BAY), 4555902 (HB HALFBEAST):
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 this instance, registrant’s mark and applicant’s mark share the HB wording in common. Because the shared HB wording gives rise to a similar commercial impression when considered in connection with applicant’s and registrant’s goods and/or services, the marks are considered similar for purposes of the likelihood of confusion analysis.
The additional wording of SPORT HARBOR BAY and HALFBEAST in the cited marks does not obviate the likelihood of confusion determination. The applied-for mark does not have anything additional to distinguish it in meaning or commercial impression from the cited 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.
As HB in the registered marks is seminal and dominant in creating the mark’s overall commercial impression, and HB is the applied-for mark, it follows that the concerned marks create a similar commercial impression, which may be sufficient to find the marks confusingly similar.
Registration No. 5748000 (HB):
In the present case, applicant’s mark is HB and registrant’s mark is HB. Although the cited mark is stylized, the applicant’s mark is in standard characters and does not claim any particular stylization. Therefore, these marks are in effect 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 and Services
Registration No. 2566969 (H B SPORT HARBOR BAY):
In this case, the registration is for clothing, however, the presence of the word “SPORT” in the mark indicates that registrant’s clothing is likely sports-related because the registration does not contain any limitations as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that registrant’s clothing includes more narrowly defined types of clothing such as those in the application.
Therefore, registrant’s goods in International Class 25 (Clothing, namely, pants, shirts, socks, underwear, belts, footwear, jackets, swimwear) are related to applicant’s services in International Class 35 (Retail store services featuring…clothing for use while road and mountain cycling, namely, gloves, jerseys, one-piece suits, outerwear, protective clothing, bike shorts, shirts, shoes, socks and undergarments), because the retail store services feature items that may encompass the registrant’s goods.
Registration No. 4555902 (HB HALFBEAST):
In this case, registrant’s goods in International Class 25 (Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms) are related to applicant’s services in International Class 35 (Retail store services featuring…clothing for use while road and mountain cycling, namely, gloves, jerseys, one-piece suits, outerwear, protective clothing, bike shorts, shirts, shoes, socks and undergarments).
Registration No. 5748000 (HB):
In this case, registrant’s goods in International Class 5 (various supplements) are related to applicant’s services in International Class 35 (Retail store services featuring…sports drink powders, energy bars, gels and chews) and registrant’s goods in International Class 25 (various athletic clothing and sportswear) are related to applicant’s services in International Class 35 (Retail store services featuring…clothing for use while road and mountain cycling, namely, gloves, jerseys, one-piece suits, outerwear, protective clothing, bike shorts, shirts, shoes, socks and undergarments), because the retail store services feature items that encompass the registrant’s goods.
See http://www.bikeworld.com/
See http://www.thebikelane.com/
See http://www.bicycleproshop.com/
See http://www.performancebike.com/
See http://www.bikenetic.com/
Therefore, because the marks are confusingly similar and the goods and services are closely related, purchasers encountering these goods and services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion, and registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONDING TO THIS 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.
How to respond. Click to file a response to this nonfinal Office action.
/Cierra McGill/
Cierra McGill
Examining Attorney
Law Office 110
U.S. Patent and Trademark Office
571-270-0976
cierra.mcgill@uspto.gov
RESPONSE GUIDANCE