To: | DOUBLE COIN TYRE GROUP LTD. (kennethcli@hotmail.com) |
Subject: | U.S. Trademark Application Serial No. 90082848 - WARRIOR - N/A |
Sent: | November 10, 2020 06:41:03 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90082848
Mark: WARRIOR
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Correspondence Address: (KENNETH) CANG LI, ATTORNEY-AT-LAW 1325 AVE. OF THE AMERICAS, 28TH FL.
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Applicant: DOUBLE COIN TYRE GROUP LTD.
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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 10, 2020
The assigned examining attorney has reviewed the referenced application and determined the following.
REGISTRATION
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. 6008502. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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.
The proposed mark is closely related to the prior registered mark in each of the factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. Applicant’s mark is WARRIOR. Registrant’s mark is TRAIL WARRIOR with the term TRAIL disclaimed. The dominant portion of registrant’s mark is identical to applicant’s mark.
Applicant offers automobile tires; vehicle tires; registrant offers tires for all-terrain vehicles (ATVs), utility-terrain vehicles (UTVs) and rough-terrain vehicles (RTV's). The goods are overlapping. Consumers, therefore, are likely to believe that the goods of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. Applicant may, however, offer evidence in support of registration.
Prior Pending Application
The filing date of pending U.S. Application Serial No. 88159838 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
Applicant’s Response
Guidelines for responding are set forth below.
How to respond. Click to file a response to this nonfinal Office action.
/wgb/
William Breckenfeld
Examining Attorney
Law Office 116
571-272-9133
Email: william.breckenfeld@uspto.gov
informal queries
RESPONSE GUIDANCE