To: | BOTACH INC. (jeff@finniplaw.com) |
Subject: | U.S. Trademark Application Serial No. 90158009 - BATTLE STEEL - BOTA0101TUS |
Sent: | January 08, 2021 01:20:13 PM |
Sent As: | ecom119@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. 90158009
Mark: BATTLE STEEL
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Correspondence Address: 11400 W. OLYMPIC BOULEVARD, 9TH FLOOR
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Applicant: BOTACH INC.
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Reference/Docket No. BOTA0101TUS
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: January 08, 2021
INTRODUCTION
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. 5148138. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached 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. 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.
In this case, applicant is seeking to register BATTLE STEEL in standard characters for “Body armor; Gun scopes; Protective load bearing vests reinforced with ballistic armor for holding tactical equipment; Ballistic resistant and blast resistant body armor and clothing; Hand-held protective shield for use by police, detention centers, correctional facilities and the like; Hard plate personal body armor; Protective ballistic resistant and blast resistant body armor, clothing and garments; Riot shields” in International Class 009 and “Carrying cases adapted for firearms; Firearm attachments, namely, mounts for attaching accessories to a firearm; Firearm attachments, namely, mounts for attaching gun sights to a firearm; Firearm attachments, namely, mounts for attaching telescopic sights to a firearm; Gun cleaning brushes; Gun and rifle cases; Gun mounts; Magazines for weapons; Shooting accessories, namely, gun rests; Tools for loading weapons, namely, loading blocks, magazine loaders; Trigger guards for guns and rifles; Weapon cases for firearms; Mobile gun mounts; Non-telescopic gun sights for firearms” in International Class 013.
Registrant has registered BATTLE STEEL in standard characters in International Class 013 for “Ammunition; Firearms; Guns; Hand gun accessories, namely, belt clips for securing a gun without the use of a holster.”
COMPARISON 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).
In the present case, applicant’s mark is BATTLE STEEL and registrant’s mark is BATTLE STEEL. 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.
Based on these considerations, the marks are deemed similar for Section 2(d) purposes.
COMPARISON OF THE GOODS
Here, applicant’s goods are armored gear and accessories and parts for firearms and registrant’s goods are firearms and ammunition. The attached evidence from Atlantic Firearms and Beretta shows that the relevant goods are often provided and marketed under the same mark, as well as 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. See attached. It is therefore reasonable for consumers to expect these goods to be provided utilizing the same mark. 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).
Based on these considerations, the goods are deemed related for Section 2(d) purposes.
CONCLUSION
Overall, because the marks are identical and the goods are related, a likelihood of confusion arises as to the underlying source of applicant’s goods. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
DISCLAIMER REQUIRED
Applicant must disclaim the wording “STEEL” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from American Heritage Online Dictionary shows that “STEEL” means “a generally hard, strong, durable, malleable alloy of iron and carbon, usually containing between 0.2 and 1.5 percent carbon, often with other constituents such as manganese, chromium, nickel, molybdenum, copper, tungsten, cobalt, or silicon, depending on the desired alloy properties, and widely used as a structural material”. See attached. Here, applicant’s goods are those that could be made of in substantial part of “STEEL” which consumers will undoubtedly recognize. Thus, the wording “STEEL” merely describes applicant’s goods because it directly identifies a central characteristic of the same.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “STEEL” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ASSISTANCE
Please call or email the assigned Trademark Examining Attorney with questions about this Office Action. Although an Examining Attorney cannot provide legal advice, the Examining Attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office Action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office Actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE