To: | LDSKS GLOBAL, INC. (kfreeman7120@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90380239 - STEEL - N/A |
Sent: | June 10, 2021 03:51:20 PM |
Sent As: | ecom102@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90380239
Mark: STEEL
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Correspondence Address:
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Applicant: LDSKS GLOBAL, INC.
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Reference/Docket No. N/A
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: June 10, 2021
1. 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. 5058838 and 5792603. 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. 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 and differences in the marks.”); TMEP §1207.01.
Statement of Facts Specific to this Application:
Applicant has applied to register the mark STEEL in standard characters in International Class 5 for “male sexual enhancer in the form of capsule.”
Registrants’ marks are:
HARD STEEL in standard characters in International Class 5 for “herbal male enhancement capsules.”
STEEL WOODY in standard characters in International Class 5 for “herbal male enhancement capsules.”
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).
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). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
HARD STEEL: There is a likelihood of confusion between applicant’s mark, STEEL, and registrant’s mark HARD STEEL as the word STEEL is dominant in creating the commercial impression for each mark. STEEL is the only word in applicant’s mark and it is the dominant word in registrant’s mark as the word HARD is an adjective that describes the word STEEL, thereby making STEEL the dominant word in registrant’s mark. Alternatively, HARD could be viewed as a sexual innuendo that is descriptive of a purpose of registrant’s goods. Either way, STEEL is dominant in creating the commercial impression for registrant’s mark. As a result, both marks have similar commercial impressions, giving rise to a likelihood of confusion.
The word STEEL is dominant in creating the commercial impression for the mark STEEL WOODY as it is the first word in that mark, making it the first word that consumers will notice in that mark. The word WOODY is not as dominant in creating the commercial impression for registrant’s mark as it may be viewed as a sexual innuendo crudely descriptive of a purpose of registrant’s goods. Accordingly, registrant’s mark has a similar commercial impression as applicant’s mark based upon the dominance of the word STEEL in creating the commercial impression.
Therefore, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods:
In this case, applicant’s goods are listed as “male sexual enhancer in the form of capsule” in International Class 5. Per the identification of goods section below (and the examining attorney’s June 9, 2021 conversation with applicant’s counsel), it appears that an accurate description of applicant’s goods are “male sexual enhancer in the form of herbal male enhancement capsules.” Both registrations list their goods as “herbal male enhancement capsules.” As a result, the goods in the application and registrations appear to be identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
The identification of goods must be amended because it includes wording that is indefinite, as further explained below.
Applicant used the following identification in its application:
International Class 5: Male Sexual Enhancer in the form of capsule
Applicant must clarify the wording “Male Sexual Enhancer” in the identification of goods in International Class 5 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This wording is indefinite because it does not make clear what the goods are. For example, this could be “Male sexual enhancer in the form of herbal male enhancement capsules” or “herbal supplements for male enhancement in the form of a capsule”, both in International Class 5.
Applicant may substitute the following wording, if accurate:
International Class 5: Male sexual enhancer in the form of herbal male enhancement capsules
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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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.
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 and requirement 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.
Edward Germick
/Edward J. Germick/
Examing Attorney
Law Office 102
(571) 272-5862
edward.germick@uspto.gov
RESPONSE GUIDANCE