To: | FOOTHILLS INNOVATIONS, LLC (matt.kulseth@boldip.com) |
Subject: | U.S. Trademark Application Serial No. 90079388 - PIVOT - N/A |
Sent: | November 24, 2020 12:38:11 PM |
Sent As: | ecom108@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90079388
Mark: PIVOT
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Correspondence Address: |
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Applicant: FOOTHILLS INNOVATIONS, LLC
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Reference/Docket No. N/A
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 24, 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 Issue(s) that Applicant Must Address:
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. 3102208 and 6038175. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is PIVOT (in standard characters) for “Stainless steel drinkware containing interchangeable stems and bowls” in International Class 21.
Registration No. 3102208 is PIVOT (in standard characters) for “Plastic cups” in International Class 21.
Registration No. 6038175 is PIVOT (in standard characters) for “Water bottles sold empty” in International Class 21.
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 [or services] and differences in the marks.”); TMEP §1207.01.
The Marks Are Identical
Applicant’s mark is PIVOT in standard characters.
Reg. No. 3102208 is PIVOT in standard characters.
Reg. No. 6038175 is PIVOT in standard characters.
As such, 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 registrants’ respective goods. Id.
Therefore, the marks are confusingly similar.
The Goods Are Related
In this case, applicant’s goods are closely related to the goods identified by registrant. Specifically, applicant goods involve “stainless steel drinkware,” as specified in the identification. The attached evidence from Wikipedia shows that “drinkware, beverageware (in other words, cups) is a general term for a vessel intended to contain beverages or liquid foods for drinking or consumption.” Therefore, applicant’s goods are broadly worded to encompass “stainless steel cups” which are related to registrant’s “plastic cups” in Registration No. 3102208 as both parties’ products are intended to contain beverages or liquid foods for drinking or consumption.
Applicant’s goods are also related to the goods in Registration No. 6038175 which involve “water bottles sold empty” in that they are marketed to the same consumers through the same trade channels and often under a single source. The examining attorney has attached evidence from third-party drinkware manufacturers Pure Drinkware, Klean Kanteen, and Hydro Flask which shows that the same producer of stainless steel drinkware also makes fruit water bottles including those made from stainless steel. Therefore, this evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. The attached evidence also shows that the relevant goods are provided through the same trade channels and used by the same classes of consumers. 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). Thus, applicant’s and registrant’s goods are related.
Therefore, because the marks are confusingly similar and the goods are closely related, there is a likelihood of confusion as to the source of the applicant’s goods. Accordingly, applicant’s mark is refused registration under Trademark Act Section 2(d).
Advisory – Prior-Filed Pending Application
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 mark in the referenced application. 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.
Requirement – Information About Goods
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
How to respond. Click to file a response to this nonfinal Office action.
/Miroslav Novakovic/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Phone: (571) 272-2866
E-mail: miroslav.novakovic@uspto.gov
RESPONSE GUIDANCE