To: | Spartan Race, Inc. (peter.riebling@rieblinglaw.com) |
Subject: | U.S. Trademark Application Serial No. 90175216 - 386499-00027 |
Sent: | December 31, 2020 10:50:17 AM |
Sent As: | ecom120@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 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90175216
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Correspondence Address: |
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Applicant: Spartan Race, Inc.
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Reference/Docket No. 386499-00027
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: December 31, 2020
INTRODUCTION:
REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION:
Registration of the applied-for mark is refused because of a likelihood of confusion with the following mark in U.S. Registration No. 5080165 (helmet design only for “Energy drinks; sports drinks” in International Class 32). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
Applicant’s applied-for mark is a front view of a silhouette of a combat helmet centered in a circular frame with a splattered background.
Registrant 5080165’s mark is a stylized black helmet design, also in a front view appearing as a silhouette.
Neither Applicant nor Registrant have any colors claimed in 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
When the marks at issue are both design marks, similarity of the marks is determined primarily on the basis of visual similarity. See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c). However, a side-by-side comparison is not the test. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973). When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).
Here, the Registrant 5080165’s mark consist of a black and white stylized version of a Spartan helmet. The top is pointed into a triangle, the sides and pointed down, and the contours of the nose shape form two square eyes. The Registrant 5080165’s design is almost identical to that of Applicant’s depiction of the Spartan helmet within the stylized circular background. Because the central focus of both marks is the shaded helmet that is nearly identical in design, the addition of the circular background with spattered background objects in Applicant’s mark does not avoid a likelihood of confusion finding. Additionally, as neither Applicant nor Registrant have any colors claimed, the shaded helmet could be displayed in the exact same shade of color. See TMEP 807.07 et seq.
As such, viewed as a whole, applicant’s mark is substantially similar in connotation and commercial impression to the registered marks.
Comparison of the Goods:
Applicant’s goods are “Non-alcoholic drinks, namely, energy shots” in International Class 32.
Registrant’s goods are “Energy drinks; sports drinks” in International Class 32.
First, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the Registrant uses broad wording to describe “Energy Drinks, sports Drinks” which presumably encompasses all goods of the type described, including applicant’s more narrow “Non-alcoholic drinks, namely, energy shots” in International Class 32. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, those of applicant’s and those of the registrants’ goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, those of applicant’s and registrant’s goods are related.
Second, the attached Internet evidence consists of screenshots of products from the websites of “5hr Energy,” “Gatorade,” “Numi,” “ProperWild” and “Shot&Go”. See attached third-party evidence. Each of these companies provides both energy drinks, sports drinks, and sports supplements in the form of energy shots. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Therefore, the goods are considered related for likelihood of confusion 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).
CONCLUSION:
Response guidelines. For this application to proceed, Applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, Applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If Applicant has questions regarding this Office action, please have your assigned U.S. trademark counsel telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
Wert, Karl
/Karl A. Wert/
Examining Attorney
Law Office 120
U.S. Patent and Trademark Office
Office Phone: (571) 270-7751
Office Email: karl.wert@uspto.gov
RESPONSE GUIDANCE