| To: | Richey & Son Inc. (trademark@faegredrinker.com) |
| Subject: | U.S. Trademark Application Serial No. 90284257 - RIVAL - 519903.2 |
| Sent: | April 06, 2021 01:59:07 PM |
| Sent As: | ecom117@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
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. 90284257
Mark: RIVAL
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Correspondence Address: |
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Applicant: Richey & Son Inc.
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Reference/Docket No. 519903.2
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: April 06, 2021
The assigned examining attorney has reviewed the referenced application and determines as follows:
Summary of Issues Below:
(1) 2d Likelihood of Confusion Refusals
(2) Amend the identification of goods/services
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSIONS
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4134385-Rival and stylized design for boxing equipment and 4212528-Rival for baseball and softball bats and 4483774- Ryval Hoops for basketball equipment. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
Comparison of 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).
Here, the proposed mark is RIVAL. The registrants’ marks are as follows:
U.S. Registration No. 4134385-Rival and stylized design and
U.S. Registration No.4212528-Rival.
U.S. Registration No. 4483774- Ryval Hoops
The marks further differ based upon the deletion of the stylized design. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
In regard to U.S. Registration No. 4483774, the marks are phonetic equivalents as the wording Rival and Ryval are both pronounced similarly. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv).
In regard to this marks, the marks differ based the deletion of the descriptive wording, namely “hoops”. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Comparison of the Goods/Services
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In the instant case, the proposed goods/services are as follows:
Class 028: Sporting goods and equipment for use in track and field, indoor sporting events, and outdoor sporting events; mats, pads, and pits for pole vaulting; mats, pads, and pits for high jumping; measuring standards and cross bars for pole vaulting; measuring standards and cross bars for high jumping; sporting cages for use in track and field and sporting training and events; hurdles; vault boxes for use in pole vaulting; training pads and equipment for use in agility training; goal post pads; exercise and gymnastic banners; accessories and replacement parts for all of the foregoing
Class 035: Retail store services and online retail store services featuring sporting goods for use in track and field, indoor sporting events, and outdoor sporting events
The registrant’s goods/services are as follows:
U.S. Registration No. 4134385-Rival and stylized design for boxing equipment
U.S. Registration No.4212528-Rival for baseball and softball bats
U.S. Registration No. 4483774- Ryval Hoops for basketball equipment
The applicant’s sporting goods and equipment for indoor sporting events and outdoor sporting events are broad enough to include boxing equipment and baseball and softball bats and basketball equipment. Determining likelihood of confusion is based on the description of the goods and/or services 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 application use(s) broad wording to describe the broader goods/services, which presumably encompasses all goods and/or services of the type described, including the registrants’ more narrowly described goods. 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, applicant’s and registrant’s goods/services 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 and/or services 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, applicant’s and registrant’s goods and/or services are related.
Based upon the similarities of the parties’ marks and the relatedness of the parties’ goods/services, consumer confusion is likely.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Informalities
In addition, to the substantive issue(s) identified above, the applicant must respond to the procedural issue(s) specified below:
Identification of Goods/Services
Applicant’s description of goods/services is unacceptable because it is indefinite. §1402.1.
Class 028: Sporting goods and equipment for use in track and field, indoor sporting events, and outdoor sporting events; mats, pads, and pits for pole vaulting; mats, pads, and pits for high jumping; measuring standards and cross bars for pole vaulting; measuring standards and cross bars for high jumping; sporting cages for use in track and field and sporting training and events; hurdles; vault boxes for use in pole vaulting; training pads and equipment for use in agility training; goal post pads; exercise and gymnastic banners; accessories and replacement parts for all of the foregoing
Class 035: Retail store services and online retail store services featuring sporting goods for use in track and field, indoor sporting events, and outdoor sporting events
Applicant must clarify the identification of goods/services as follows: See TMEP §1402.01.
(1) “Sporting goods and equipment for use in track and field, indoor sporting events, and outdoor sporting events” is overly broad as the goods have yet to be identified. Please provide the common commercial names of the goods to clarify.
(2) “mats, pads” for “pole vaulting” and “high jumping” are indefinite and likely misclassified. Please note that as there was a change in 2017 when yoga mats was changed from class 028 to class 027, as a floor covering. Notably, the id manual now includes goods such as wresting mats, personal exercise mats in class 027 and not class 028. Here, the mats and pads are used for pole vaulting and high jumping, but are likely also considered floor coverings
(3) “measuring standards” suggests a class 009 good, however it is noted that “volley ball standards” are in class 028. The applicant may consider amending the goods to remain in class 028.
(4) “training pads for use in agility training” is indefinite and must be clarified consistent with the id manual, e.g., protective padding for playing (indicate the sport} in class 028 or pads for use in {indicate the sport and type of pad, e.g., shoulder pads for use in football”
(5) “goal post pads” appears to be akin to “nets for soccer ball goals and nets for ice hockey goals”. As a result, this wording may remain in class 028.
(6) “accessories and replacement parts for all of the foregoing” are too broad as this could include bars and hardware. Therefore this wording is considered indefinite.
Suggested Acceptable Identification Of Goods/Services
Applicant is encouraged to adopt the suggested language, if accurate.
Class 006: accessories and replacement parts for sporting goods in the nature metal hardware, namely {specify the common commercial names of the goods, e.g., nuts, washers}
Class 009: measuring standards, namely measuring rules for pole vaulting
Class 027: Mats and pads for pole vaulting and high jumping
Class 028: Sporting goods and equipment for use in track and field, indoor sporting events, and outdoor sporting events,
namely {specify the common commercial names of the goods, e.g., “track and field hammers”}, mats, pads, and pits for
pole vaulting; mats, pads, and pits for high jumping; measuring standards and cross bars for pole vaulting;
measuring standards and cross bars for high jumping; sporting cages for use in track and field and sporting training and
events; hurdles; vault boxes for use in pole vaulting; protective padding, namely training pads and equipment, namely {specify the nature of the equipment}
for use in agility training; goal post pads; exercise and gymnastic banners; accessories and replacement parts for all of the foregoing
Class 035: Retail store services and online retail store services featuring sporting goods for use in track and field, indoor sporting events, and outdoor sporting events
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 006, 009, 027, 028, 035. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
How to respond. Click to file a response to this nonfinal Office action.
/Nakia D. Henry/
Trademark Attorney (Law Office 117)
Phone: (571) 272-7208
Fax: (571) 273-7208
E-mail: nakia.henry@uspto.gov
RESPONSE GUIDANCE
