Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  March 23, 2021

 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 15, 2021.

 

In a previous Office action dated September 14, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. 

 

In response, applicant argues the applied-for mark is not likely to cause confusion with the registered mark. Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Therefore, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 1774633.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES made final

 

• Section 2(d) refusal – likelihood of confusion

 

Final refusal – Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1774633.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

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 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.  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. 

 

Applicant’s applied-for mark is VALIANT in standard characters for “gloves for laboratory purposes; personal protective equipment (PPE), namely, protective work gloves; protective gloves for industrial use” in International Class 9 and “dental gloves; gloves for medical purposes; gloves for medical use; medical gloves; protective gloves for medical use; nitrile gloves for medical use” in International Class 10.

 

Registrant’s mark is VALIANT in standard characters for “safety headgear; namely, hard hats and hard caps” in International Class 9.

 

Applicant’s and registrant’s marks are similar because the marks are identical. In addition, the compared goods are commonly provided by the same entity and travel in the same channels of trade.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is VALIANT and registrant’s mark is VALIANT.  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.  Id.

 

In response, applicant does not dispute the relatedness of the compared marks.

 

Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.

 

Relatedness of the Goods

 

The goods 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).

 

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] 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).

 

In response, applicant argues the compared goods are dissimilar in terms of nature, use, and function. However, applicant’s gloves and registrant’s headwear are used for safety and protection purposes. As shown by the attached evidence from the United States Department of Labor, “[p]ersonal protective equipment . . . is equipment worn to minimize exposure to hazards that cause serious workplace injuries and illnesses.” This equipment “may include items such as gloves, safety glasses and shoes, earplugs or mugs, hard hats, respirators, or coveralls, vests and full body suits.” (emphasis added). Thus, the compared goods both serve the function of ensuring personal safety in the workplace.

 

Although the compared goods serve the same function and the evidence establishes relatedness, the degree of similarity between the goods that is needed to support a finding of likelihood of confusion is lessened because the compared marks are identical. 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).

 

In addition, applicant asserts the previously attached evidence from Cordova, LIFT, Pyramex, and Swift First Aid is insufficient to show relatedness. While the evidence shows the compared goods offered under the same mark, additional evidence consisting of website excerpts from 3M, Defender Safety, Ergodyne, Honeywell Safety, Ironwear, Majestic, ORR Safety, PIP, Portwest, Radians, Uline, and Westchester Protective Gear further establishes the relatedness of the compared goods. In particular, the evidence demonstrates 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 or provided through the same trade channels and used by the same classes of consumers in the same fields of use. The evidence, from safety equipment companies and retailers, also shows that the goods are similar or complementary in terms of purpose or function because the compared goods are personal protective equipment.  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). Specifically, the evidence demonstrates the following:

 

• 3M, Honeywell Safety, Ironwear, Majestic, ORR Safety, Portwest, Uline, and Westchester Protective Gear provide work, industrial, laboratory, dental, medical, and nitrile gloves (applicant’s goods), as well as hard hats (registrant’s goods).
• Ergodyne and Radians provide work and industrial gloves (applicant’s goods), as well as hard hats (registrant’s goods).
• Defender Safety provides dental, medical, and nitrile gloves (applicant’s goods), as well as hard hats (registrant’s goods).

 

Although the evidence demonstrates that the compared goods are sold by personal protective equipment companies and retailers, applicant argues the goods travel in different channels of trade. In support of applicant’s argument, applicant has provided evidence consisting of a website excerpt from registrant’s webpage. However, evidence of the parties’ actual use has no probative value in this analysis. Instead, when analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic 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 evidence establishes that the compared goods, as identified by registrant and applicant, are marketed, distributed, or sold together. Therefore, the evidence demonstrates that the compared goods travel in the same channels of trade.

 

Furthermore, applicant asserts the compared goods are used by different industries. However, evidence from the University of Minnesota and the U.S. Department of Labor establishes that employees in construction and other related industries wear work gloves and hard hats for protection. Thus, applicant’s and registrant’s goods are used together.

 

Lastly, applicant contends there is not likelihood of confusion because the purchasers of registrant’s goods are sophisticated. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

Based on the analysis above, applicant’s and registrant’s goods are related.

 

Because applicant’s and registrant’s marks are similar and the goods are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act. Based on the foregoing, the refusal based on a likelihood of confusion is maintained and now made FINAL.

 

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).

 

 

Anicka Purath

/Anicka S. Purath/

Examining Attorney

Law Office 101

(571) 270-0622

anicka.purath@uspto.gov

 

 

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 March 23, 2021 for

U.S. Trademark Application Serial No. 90078119

 

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. 

 

 

Anicka Purath

/Anicka S. Purath/

Examining Attorney

Law Office 101

(571) 270-0622

anicka.purath@uspto.gov

 

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 March 23, 2021, 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.”