To: | U.S. Xpress Enterprises, Inc. (mbaratta@kilpatricktownsend.com) |
Subject: | U.S. Trademark Application Serial No. 90348258 - TROVE - 1203278 |
Sent: | May 16, 2021 05:40:15 PM |
Sent As: | ecom128@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. 90348258
Mark: TROVE
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Correspondence Address: KILPATRICK TOWNSEND & STOCKTON LLP 1100 PEACHTREE STREET, SUITE 2800
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Applicant: U.S. Xpress Enterprises, Inc.
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Reference/Docket No. 1203278
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: May 16, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 marks in the referenced applications. 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.
While applicant is not required to respond to the issue of the pending application, applicant must respond to the following refusals within six months of the mailing date of this Office action to avoid abandonment.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Standard of Analysis for Section 2(d) Refusal
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 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.
Facts
Applicant has applied to register the mark TROVE (in standard characters) for use, in relevant part, on “Freight logistics management; transportation logistics services, namely, arranging the transportation of goods for others; freight management services, namely, shipment processing, preparing shipping documents and invoices, and tracking documents, packages and freight over computer networks, intranets and the internet for business purposes; shipment processing, namely, monitoring and tracking of package shipments to ensure on-time delivery for business purposes; business and office administration services, namely, tracking freight over computer networks, intranets, and the internet for others; business advisory services in the fields of freight delivery, freight logistics, transportation logistics, and freight brokerage; business management services in the fields of freight delivery, freight logistics, transportation logistics, and freight brokerage” in International Class 35 and “design and development of computer hardware and software in the fields of freight delivery, freight logistics, transportation logistics, and freight brokerage” in International Class 42.
Registrant’s mark is CHINATROVE (in standard characters) for use, in relevant part, on “business management; business administration; office functions; commercial and industrial management assistance; advisory services for business management; business consultation, business analysis, business research and business advice in relation to commodities . . . transport, logistics; information, consultancy and advisory services relating to all the aforesaid services including such services provided on-line or via the Internet” in International Class 35 and “design and development of computer hardware and software” in International Class 42.
Similarity 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).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In this case, applicant’s proposed mark is confusingly similar to the registered mark because the marks share the dominant word TROVE, which may be pronounced or displayed identically, thereby creating similarities in sound, appearance, and commercial impression.
Indeed, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant’s services sold under the “TROVE” mark constitute a new or additional product line from the same source as the services sold under the “CHINATROVE” mark with which they are acquainted or familiar, and that applicant’s proposed mark is merely a variation of registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc., 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer’s preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
Therefore, the marks are confusingly similar.
Relatedness of Services
In this case, the registration uses broad wording to describe “business management; business administration; office functions; commercial and industrial management assistance; advisory services for business management; business consultation, business analysis, business research and business advice in relation to commodities . . . transport, logistics; information, consultancy and advisory services relating to all the aforesaid services including such services provided on-line or via the Internet” and “design and development of computer hardware and software,” which presumably encompasses all services of the type described, including applicant’s narrower “Freight logistics management; transportation logistics services, namely, arranging the transportation of goods for others; freight management services, namely, shipment processing, preparing shipping documents and invoices, and tracking documents, packages and freight over computer networks, intranets and the internet for business purposes; shipment processing, namely, monitoring and tracking of package shipments to ensure on-time delivery for business purposes; business and office administration services, namely, tracking freight over computer networks, intranets, and the internet for others; business advisory services in the fields of freight delivery, freight logistics, transportation logistics, and freight brokerage; business management services in the fields of freight delivery, freight logistics, transportation logistics, and freight brokerage” and “design and development of computer hardware and software in the fields of freight delivery, freight logistics, transportation logistics, and freight brokerage.” 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 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, registrant’s services has 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” as that of applicant’s. 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 services are related.
In conclusion, because the marks are similar and the services are related, there is a likelihood of confusion as to the source of applicant’s services. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
ASSISTANCE
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.
/Salima Parmar Oestreicher/
Salima Parmar Oestreicher
Examining Attorney
Law Office 128
(571) 272-6786
Salima.Oestreicher@uspto.gov
RESPONSE GUIDANCE