United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90467617
Mark: ONEKU
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Correspondence Address: |
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Applicant: Yang Yong
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Reference/Docket No. GKB1011401
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 03, 2021
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied for “ONEKU” in standard characters for, “Compostable and biodegradable cutlery, namely, knives, spoons, forks; Electric animal nail grinders; Electric fingernail polishers; Electric nasal hair trimmers; Epilatory appliances; Hand-operated dog waste collection tools; Hand saws; Hand tools for repair and maintenance of bicycles; Hand tools for use in tying artificial fishing flies, namely, vises, tweezers and scissors; Hand tools, namely, knife sharpeners; Manicure sets; Nail skin treatment trimmers; Pedicure implements, namely, nail files, nail clippers, cuticle pushers, tweezers, nail and cuticle scissors; Stainless steel table knives, forks and spoons; Vegetable slicers” in Class 008 (“applied-for mark”).
Registrant’s mark is “ONEKOO” in standard characters for, “Cleaning brushes for household use; Clothes-pins; Disposable dinnerware, namely, plates; Gloves for household purposes; Hair combs; Mixing spoons; Nail brushes; Pastry brushes; Pastry molds; Personal dispensers for pills or capsules for domestic use; Scoops for serving or portioning coffee; Swizzle sticks; Tea strainers; Toilet paper holders; Works of art made of glass” in Class 021 (“cited mark”).
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.
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).
The applied-for mark is “ONEKU”. The cited mark is “ONEKOO”. These marks are essentially identical but for the last letter(s). Each word begins with the identical letters “ONEK-” and applicant’s mark ends with “-U” whereas the cited mark ends with “-OO”. However, these vowel sounds are often pronounced the same. See http://thesoundofenglish.org/oo-pronunciation-rules/.
This is because there is no correct pronunciation of a mark; thus, consumers may pronounce a mark differently than intended by the mark owner. See In re Viterra, Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing Interlego AG v. Abrams/Gentile Entm’t, Inc., 63 USPQ2d 1862, 1863 (TTAB 2002)); TMEP §1207.01(b)(iv). In the present case, the compared marks could clearly be pronounced the same. Such 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).
Even if the marks are pronounced slightly differently, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Therefore, the applied-for mark and the cited mark are highly similar in appearance, sound, connotation, and commercial impression.
Relatedness of the Goods
Thus, these 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).
With respect to applicant’s remaining goods, namely, “Hand-operated dog waste collection tools,” “Hand saws,” “Hand tools for repair and maintenance of bicycles”, and “Hand tools for use in tying artificial fishing flies, namely, vises, tweezers and scissors,” the undersigned trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the relevant goods listed therein, namely hand-operated dog waste collection tools, hand saws, hand tools for repair and maintenance of bicycles, vises, tweezers, scissors (applicant), swizzle sticks, toilet paper holders, mixing spoons, and tea strainers (registrant) are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). See the attached registrations:
In sum, because of the similarities between the marks themselves and the relatedness of the goods, consumers are likely to be confused and mistakenly believe the applicant’s goods and the registrant’s goods originate from the same source. Thus, registration is refused under Section 2(d) of the Trademark Act.
AMENDED NEGATIVE TRANSLATION STATEMENT (ADVISORY)
The following amended negative translation statement is added to the record (changes in bold):
The wording “ONEKU” has no meaning in a foreign language.
See 37 C.F.R. §2.61(b); TMEP §809.03.
RESPONSE GUIDELINES
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.
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.
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/Travis W. White/
Travis W. White
Trademark Examining Attorney
Law Office 126, USPTO
(571) 272-7236
travis.white@uspto.gov
RESPONSE GUIDANCE