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. 90106540
Mark: PHANTOM
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Correspondence Address: |
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Applicant: ABEL UNLIMITED INC.
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Reference/Docket No. 101468.00030
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: August 03, 2021
This Office action is in response to applicant’s communication filed on June 10, 2021.
In a previous Office action(s) dated December 10, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
Based on applicant’s response, 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 MADE FINAL
Applicant’s mark is “PHANTOM” (in standard character form) for “protective work gloves for non'medical use,” in International Class 9. Registrant’s mark is “PHANTOM” also in standard character form (US Reg. 3442978) for “gloves for medical use,” in International 10.
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.
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).
As discussed in the December 10, 2020 Office Action, the applicant’s mark, “PHANTOM” is identical to registrant’s mark, “PHANTOM”. Thus, the marks are considered confusingly similar. Applicant does not dispute that the marks are identical. Rather, applicant contends that since “there are currently 6 registered and coexisting “PHANTOM” marks in the USPTO,…the strength of the term PHANTOM [is reduced],…making the noted distinctions [in the goods] more relevant.”
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REGISTERED MARK PROVIDED BY APPLICANT |
DESCRIPTION OF GOODS/SERVICES |
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FLYING PHANTOM® (and design) 5173574
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Class 9: Compasses; diving suits; marine compasses; spectacle cases; nets for protection against accidents; safety nets; diving gloves; life jackets; spectacles; anti-glare glasses, goggles for sports; sunglasses; divers' masks; electric navigational instruments; satellite navigation apparatus for boats; satellite navigation apparatus, namely, a global positioning system (GPS); naval signaling apparatus, namely, emergency signal transmitters
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PHANTOM HORSE® (with design) 2531861 |
Class 28: Sporting goods, namely golf balls, golf clubs, golf gloves, golf bag covers, head covers for golf clubs, golf tees, golf tee markers, golf ball markers, golf bag tags, golf cart signs for tournaments, and divot tools |
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PHANTOM® 3442978 |
Class 9: Gloves for medical use |
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PHANTOMLEAF® 5754522 |
Class 25: Clothing, namely, shirts, jackets, vests, coats, pants, and overall pants, gloves, ponchos; footwear; and headgear, namely, hats and caps |
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PHANTOMLEAF INTELLIGENT CAMOUFLAGE SYSTEMS ® (with design) 3845381 |
Class 25: Clothing, namely, shirts, jackets, coats, pants and overall pants, gloves, ponchos; footwear; and headgear, namely, hats and caps |
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PHANTOMLOVELY® (stylized) 4763777 |
Class 25: Blouses; Cardigans; Coats; Corsets; Dresses; Fashion hats; Footwear; Gloves; Gowns; Headwear; Hoods; Jackets; Leggings; Lingerie; Pants; Scarves; Shawls; Shirts; Shorts; Skirt suits; Skirts; Sweaters; T-shirts; Tops; Wraps |
Under current trademark law, the weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording PHANTOM is weak or diluted.
Notwithstanding the applicant’s arguments, the marks in the application and registration 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 the marks 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.
Thus, the marks are confusingly similar under Trademark Act Section 2(d).
Relatedness of the Goods
Applicant's “protective work gloves for non'medical use” are related to registrant’s “gloves for medical use” because they are commonly sold by the same source under the same trademark.
Applicant contends that its amended goods and the registrant’s goods are not closely related because applicant’s gloves are for non-medical use and registrant’s goods are for medical use.
Applicant further contends that the amended goods in the application and registration “travel in trade channels distinct from the registrant’s gloves, that’s its goods are for a purposes separate and distinct from medical gloves, and that its gloves would not likely be encountered by the same consumers, let alone cause confusion among consumers.” Applicant further states that “consumers looking for protective glove[s]…in the medical field – for protection from germs and contaminants and for purposes of patient safety and safety of medical personnel, would certainly not come across applicant’s gloves which are designed for industrial use and for protection from injury.”
Additionally, examining attorney likewise refers back to the Internet evidence submitted with the December 10, 2020 Office Action, consisting of excerpts from SaraWork.com, FullSource.com, GloveNation.com, and IndustrialSafetyGear.com, establishing that the relevant goods, namely, medical gloves and non medical gloves are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s gloves are considered related for likelihood of confusion purposes even though applicant’s gloves are not for medical 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).
Finally, applicant contends that the medical gloves offered by registrant should be distinguishable from applicant’s non-medical gloves because goods in the medical field are necessarily purchased only after careful consideration.
The examining attorney likewise finds this argument to be unpersuasive and attaches additional Internet evidence. This Internet evidence consisting of website excerpts establishes that due to the ongoing global pandemic of the coronavirus 19 disease, medical grade gloves are no longer considered highly specialized. Rather, as shown by excerpts from the Amazon marketplace captured on August 2, 2021, medical gloves are priced as low as $9.99 and can be routinely purchased by non-medical users without much consideration and at relatively low prices. Generally, for products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)).
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Internet evidence Showing Increase in Availability and Use of Medical Gloves by Medical and Non Medical Users; and Low Price of Medical Gloves |
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The global market for medical gloves has been changing gears since the outbreak of the coronavirus pandemic. It is no surprise that the COVID-19 outbreak has greatly changed the masses' perspective of the risk of infection transmission. The use of PPE kits, which is otherwise reserved for healthcare workers, has now spread to the general population. As a result, most of all the medical gloves have now become an essential source of protection from SARS-CoV-2 infection, for both the front-line warriors as well as the general public. |
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http://www.grandviewresearch.com/industry-analysis/disposable-gloves-market
The global disposable gloves market size was valued at USD 10.17 billion in 2020 and is expected to grow at a compound annual growth rate (CAGR) of 9.2% from 2020 to 2028. The growing demand for disposable gloves, especially from the healthcare industry amidst the ongoing Covid-19 pandemic, along with the rising awareness about Healthcare-Associated Infections (HAIs), is expected to drive the market growth.
North America dominated the disposable gloves market with a share of 35.6% in 2019. This is attributable to regulatory agencies enforcing norms on employers to ensure worker safety on account of increasing occupational hazards and sudden outbreaks of the COVID-19 pandemic. |
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The gloves market is poised to grow by USD 8.02 billion during 2020-2024 progressing at a CAGR of almost 9% during the forecast period. The report offers an up-to-date analysis regarding the current global market scenario, the latest trends and drivers, and the overall market environment.
Similarly, North America led the market with a 34% share in 2019. The strong growth of end-user industries such as food services, biotechnology, and pharmaceuticals is one of the key factors driving the demand for gloves in North America. In addition, the rising consumer awareness about safety and hygiene has further fueled the growth of the gloves market in North America. |
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http://www.amazon.com/gp/bestsellers/industrial/8404645011
Various boxes of medical gloves sold on Amazon.com starting price $9.99 |
Moreover, where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods 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).
Therefore, because the marks are identical and the goods are offered in the same channels of trade, purchasers encountering these goods 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
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).
/Mariessa Terrell/
Examining Attorney
Law Office 106
571-272-5764
mariessa.terrell@uspto.gov
RESPONSE GUIDANCE
