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. 90361139
Mark: F FLOW
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Correspondence Address: |
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Applicant: Flow Supplements, LLC
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Reference/Docket No. FLOW-001
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 25, 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.
SUMMARY OF ISSUES
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 6316319 (FLOW), 6316194 (FLOW), 6121806 (FLOW), 5901264 (SHOP FLOW), and 2648220 (FLOW). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant seeks to register the mark F FLOW in stylized form for “Online retail store services featuring shaker cups, hats, t-shirts, tanks, protein-based shakes, protein-based snacks, collagen peptides, energy drinks and pre-workout drink mixes” in Class 35.
The cited registrations are summarized as follows:
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Mark Reg. No. |
Owner |
Class and Goods / Services |
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FLOW 6316319 |
Strategy Investments, Inc. |
35: Retail store services featuring beer, wine, liquor, medicines, and household goods |
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FLOW 6316194 |
Strategy Investments, Inc. |
35: Retail convenience stores |
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FLOW 6121806 |
Karla Dascal |
35: Retail store services featuring crystals, jewelry, soaps, bath products, candles, books, calendars, prints, sacred objects, incense, clothing, cosmetics, skincare products from around the world made in accordance with specific standards; and retail stores featuring crystals, jewelry, soaps, bath products, candles, books, calendars, prints, sacred objects, holistic products, incense, clothing, cosmetics, and skincare products |
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SHOP FLOW 5901264 |
Karla Dascal |
Retail store services featuring wellness products, lifestyle products, crystals, jewelry, soaps, bath products, candles, books, calendars, prints, sacred objects, holistic products, ritual objects, incense, clothing, cosmetics, skincare products from around the world made in accordance with specific standards; Retail stores featuring wellness products, lifestyle products, crystals, jewelry, soaps, bath products, candles, books, calendars, prints, sacred objects, holistic products, ritual objects, incense, clothing, cosmetics, skincare products |
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FLOW 2648220 |
Nidecker, S.A |
25: Clothing, namely, shirts, sweaters, snowboarding shirts; snowboarding boots; footwear; headwear; snowboard boot bags |
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).
In this instance, applicant’s mark F FLOW creates a confusingly similar commercial impression as the registered marks FLOW and SHOP FLOW. Each of the marks incorporates the identical term FLOW, which creates a similar meaning and commercial impression. With respect to the registrations comprising only the wording FLOW, applicant’s mark F FLOW incorporates the registered marks in their entirety. The term SHOP in Registration No. 5901264 is descriptive and disclaimed, and provides little source-identifying significance. Similarly, the stylized letter F in applicant’s mark does not obviate the similarity with the registered marks, as it is incorporated into the word FLOW and provides little source-identifying significance. A consumer encountering applicant’s mark is likely to view this element as either a non-distinctive design, or as the initial standing for the first letter of the word FLOW. Compared in their entireties, the marks are confusingly similar.
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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the marks are confusingly similar, and consumers encountering the marks in the same commercial channels are likely to confuse the marks or at least mistake the underlying sources of closely-related goods and/or services provided under the marks.
Relatedness of the Goods and Services
Registration Nos. 6316319 and 6316194
Applicant’s services are online retail store services featuring shaker cups, hats, t-shirts, tanks, protein-based shakes, protein-based snacks, collagen peptides, energy drinks and pre-workout drink mixes. The cited registrations identify retail store services featuring beer, wine, liquor, medicines, and household goods and retail convenience stores. These services are closely related, all incorporating retail store services directed to a variety of consumer goods.
The attached Internet evidence, consisting of screenshots from 7-11, Circle K, and Wawa, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Specifically, the same retail stores commonly provide a variety of consumer goods, including alcohol, energy drinks, food, and snacks. Thus, applicant’s and registrant’s goods and/or services 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).
Registration Nos. 5901264 and 6121806
Applicant’s services are online retail store services featuring shaker cups, hats, t-shirts, tanks, protein-based shakes, protein-based snacks, collagen peptides, energy drinks and pre-workout drink mixes. The cited registrations identify retail store services featuring wellness products, lifestyle products, crystals, jewelry, soaps, bath products, candles, books, calendars, prints, sacred objects, holistic products, ritual objects, incense, clothing, cosmetics, and skincare products. These services are closely related and legally identical.
Both applicant and registrant provide retail store services featuring clothing, and the goods identified as “wellness products” and “lifestyle products” for the retail services Registration No. 5901264 are broad enough to encompass the goods subject to applicant’s retail services.
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 registration uses broad wording to describe retail store services and retail stores featuring wellness products, lifestyle products, and clothing, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow online retail store services featuring shaker cups, hats, t-shirts, tanks, protein-based shakes, protein-based snacks, collagen peptides, energy drinks and pre-workout drink mixes. 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, 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.
Registration No. 2648220
Applicant’s identification of services includes online retail store services featuring hats, t-shirts, and tanks. The goods in Registration No. 2648220 include shirts, sweaters, snowboarding shirts, snowboarding boots, footwear, and headwear. These goods and services are closely related because the same entities commonly provide clothing and apparel, as well as retail services thereto.
The attached Internet evidence, consisting of screenshots from Adidas, Columbia, and Roxy, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and/or services are similar or complementary in terms of purpose or function. Specifically, the same entities commonly provide both clothing and apparel, as well as retail services selling those items. Thus, applicant’s and registrant’s goods and/or services 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).
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re Country Oven, Inc., 2019 USPQ2d 443903, at *12 (TTAB 2019) (holding the use of identical marks for bread buns and retail bakery stores and shops likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion);TMEP §1207.01(a)(ii).
Finally, to the extent the evidence may not address all of the items in Applicant’s identification, relatedness does not have to be established for every product/service. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified goods/services, which is enough to show a likelihood of confusion.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Therefore, upon encountering F FLOW used in connection with online retail store services featuring shaker cups, hats, t-shirts, tanks tank tops, protein-based shakes, protein-based snacks, collagen peptides, energy drinks and pre-workout drink mixes, and FLOW and SHOP FLOW used in connection with their respective goods and retail services, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source.
Thus, the mark is refused under Section 2(d) of the Trademark Act.
Applicant may substitute the following wording, if accurate:
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
How to respond. Click to file a response to this nonfinal Office action.
/Alina Morris/
Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-2256
alina.morris@uspto.gov
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