Office action text of Amazon's Trademark Alexa - Likelihood of Confusion rejection

The reply is here.

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL – LIMITED

The stated refusal refers to the following goods and does not bar registration for the other goods and:

• Apparatus for . . . water supply and sanitary purposes, namely, smart home apparatus for . . . water supply and sanitary purposes;
• WiFi-enabled . . . water supply and sanitary apparatus;
• Internet of things (IoT) enabled . . . water supply and sanitary apparatus;
• Voice responsive . . . water supply and sanitary apparatus;
• Voice responsive . . . water supply and sanitary apparatus;
• Internet of things (IoT) enabled household appliances, namely, . .       water heaters;
• WiFi enabled household appliances, namely, . . . water heaters;
• Voice responsive household appliances, namely, . . . water heaters;
• Apparatus . . . water supply and sanitary purposes, namely, apparatus for . . . water supply and sanitary purposes with software and hardware for internet of things (IoT) and voice responsiveness;
• Water supply and sanitary apparatus with software and hardware for internet of things (IoT) and voice responsiveness; and
• Household appliances, namely, . . .water heaters with hardware and software for internet of things (IoT) and voice responsiveness.

Registration of the applied-for mark is refused in regard to the above-listed goods because of a likelihood of confusion with the mark in U.S. Registration No. 5215208. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.   See the attached registration.

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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

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.

Specifically, applicant seeks registration of ALEXA (a standard character mark) for use with, in relevant part, the following goods in International Class 11:

• Apparatus for . . . water supply and sanitary purposes, namely, smart home apparatus for . . . water supply and sanitary purposes;
• WiFi-enabled . . . water supply and sanitary apparatus;
• Internet of things (IoT) enabled . . . water supply and sanitary apparatus;
• Voice responsive . . . water supply and sanitary apparatus;
• Voice responsive . . . water supply and sanitary apparatus;
• Internet of things (IoT) enabled household appliances, namely, . .       water heaters;
• WiFi enabled household appliances, namely, . . . water heaters;
• Voice responsive household appliances, namely, . . . water heaters;
• Apparatus . . . water supply and sanitary purposes, namely, apparatus for . . . water supply and sanitary purposes with software and hardware for internet of things (IoT) and voice responsiveness;
• Water supply and sanitary apparatus with software and hardware for internet of things (IoT) and voice responsiveness; and
• Household appliances, namely, . . .water heaters with hardware and software for internet of things (IoT) and voice responsiveness.

Registrant Patriot Supply Store, Inc. holds a valid and subsisting United States trademark registration for A SURVIVAL SPRING BY ALEXAPURE and Design for use with “Water purification and filtration apparatus,” in International Class 11. In light of the similarities between the marks and given the relatedness of their uses, consumer confusion is likely.

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)); TMEP §1207.01(b).

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.   Further, the ALEXAPURE word element of the cited mark presents ALEXA in a different color than PURE, thus emphasizing the wording ALEXA in the ALEXAPURE component of the cited mark.

COMPARISON OF GOODS

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

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).

The attached evidence from the Vocabulary.com website shows that a water filter is used to “remove impurities from the water supply. This evidence shows that the function of applicant’s water filtration apparatus goods is to remove impurities from the water supply. Applicant intends to use the applied-for mark with water supply apparatus goods. Because applicant’s goods are used to filter a water supply, the parties’ goods are similar or complementary in terms of purpose or function. Consequently, applicant’s water supply apparatus goods and registrant’s 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).

The 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 goods listed therein, namely water heaters and water purification and filtration apparatus, 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).

SUMMARY – LIKELIHOOD OF CONFUSION

In light of the similarities between the marks and the relatedness of the goods, it is likely that consumers who encounter the parties’ goods will falsely conclude that they originate from the same source.

Based on the foregoing, the applied-for mark is refused registration under Trademark Act Section 2(d) in regard to the following goods:

• Apparatus for . . . water supply and sanitary purposes, namely, smart home apparatus for . . . water supply and sanitary purposes;
• WiFi-enabled . . . water supply and sanitary apparatus;
• Internet of things (IoT) enabled . . . water supply and sanitary apparatus;
• Voice responsive . . . water supply and sanitary apparatus;
• Voice responsive . . . water supply and sanitary apparatus;
• Internet of things (IoT) enabled household appliances, namely, . .       water heaters;
• WiFi enabled household appliances, namely, . . . water heaters;
• Voice responsive household appliances, namely, . . . water heaters;
• Apparatus . . . water supply and sanitary purposes, namely, apparatus for . . . water supply and sanitary purposes with software and hardware for internet of things (IoT) and voice responsiveness;
• Water supply and sanitary apparatus with software and hardware for internet of things (IoT) and voice responsiveness; and
• Household appliances, namely, . . .water heaters with hardware and software for internet of things (IoT) and voice responsiveness.

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:

(1) Deleting the goods and/or services to which the refusal pertains;

(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or

(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a).   TMEP §1904.01(a).)

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 requirements set forth below.