United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90056370
Mark: COMPADRE
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Correspondence Address:
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Applicant: Leguizamon, Sebastian
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Reference/Docket No. N/A
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: June 07, 2021
This Office action is in response to applicant’s communication filed on May 4, 2021 (the “Response”).
In a previous Office action dated November 6, 2020 (the “Prior Action”), the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) Refusal for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: Amended Identification of Goods Requirement.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Amended Identification of Goods Requirement. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal 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
Registration of the applied-for mark was previously refused because of a likelihood of confusion with the mark in U.S. Registration No. 3551200. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration attached to the Prior Action.
In the Response, Applicant has deleted some of the goods in the application. However, for the reasons set forth below, this is not sufficient to overcome the refusal, and thus the refusal to register the mark pursuant to Section 2(d) of the Trademark Act is made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
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.
Applicant seeks to register the mark “COMPADRE” in stylized characters for “Cigarette lighters; Cigarette lighters not for land vehicles; Cigarette lighters not of precious metal; Cigarette lighters of precious metal; Electronic cigarette lighters” in International Class 034.
Registrant’s mark is “COMPADRE” in standard characters for “cigar holder; cigar holder attachable to furniture, vehicles, and portable objects; cigar holder with clamp to facilitate attachment to a supporting object” in International Class 034.
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).
Applicant’s mark is “COMPADRE” in stylized characters.
Registrant’s mark is “COMPADRE” in standard characters.
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).
Therefore, although the applied-for mark is stylized, the registered mark is in standard characters and has protection in all stylizations, and therefore is legally identical to the applied-for mark.
These marks are legally 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 legally 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. Id.
Therefore, the marks are confusingly similar.
Applicant did not present any arguments or evidence to contradict the similarities in the respective marks, and therefore, to the extent that the Response is an argument against this refusal, it is unpersuasive at this time.
As set forth above, Applicant’s mark “COMPADRE” is confusingly similar with registrant’s mark in U.S. Reg. No. 3551200. Next, the goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.
Similarity or Relatedness 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 and services stated in the application and registrations at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Here, the goods identified by Applicant are “Cigarette lighters; Cigarette lighters not for land vehicles; Cigarette lighters not of precious metal; Cigarette lighters of precious metal; Electronic cigarette lighters” in International Class 034.
The goods identified by registrant are “cigar holder; cigar holder attachable to furniture, vehicles, and portable objects; cigar holder with clamp to facilitate attachment to a supporting object” in International Class 034.
In addition to those third party registrations, and the evidence attached to the Prior Action from BC Specialties, Cigars International, Emerson’s, Neptune, Thompson, Tobacco & Vape King, VA Smoke Shop, and Vape n Cigar, the additional Internet evidence from SJ Cigars, Brizard & Co., Home Wet Bar, Famous Smoke Shop, Holt’s Cigar Company, Cigars International, ReadyGolf, 1st Class Cigar Humidors, and The Smoking Store attached to this current Office Action, establishes that the same entity commonly manufactures, produces, and/or especially provides all kinds of tobacco and tobacco-related products and markets the goods under the same mark.
Most importantly, this evidence shows that at a minimum, all these goods are commonly sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are similar or highly complementary in terms of purpose or function. Specifically, these are all goods that are the tobacco-product accessories for smoking, using, or storing these products, and because of the age-restricted nature of these goods, are often in specialty stores that sell all these goods, or are in segregated sections of stores where all these products are displayed or grouped together. 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). Most explicitly, cigar clips, as identified in the registration, are inherently used with cigars, as are identified in the application.
Finally, where the marks of the respective parties are identical or virtually 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).
Other than amending the identification of goods to delete some of the listed goods, Applicant did not present any arguments or evidence to contradict the similarities in the remaining goods, and therefore, to the extent that the Response is an argument against this refusal, it is unpersuasive at this time.
Accordingly, Applicant’s goods are sufficiently related to the goods identified in U.S. Registration No. 3551200, such that consumers may mistakenly believe they originate from a single source.
Conclusion
Based on the foregoing, the refusal to register the applied-for mark, pursuant to Trademark Act Section 2(d), due to a likelihood of confusion with U.S. Trademark Registration No. 3551200, is hereby made FINAL.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney to resolve the issues in this Office action. Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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).
Roth, Benjamin
/Benjamin H. Roth/
Examining Attorney
Law Office 122
(571) 272 -5266
benjamin.roth@uspto.gov
RESPONSE GUIDANCE
