Response to Trademark BOLIDO Office Action - Likelihood of Confusion rejection example

Response to Trademark BOLIDO Office Action - Likelihood of Confusion rejection example

  • 08 May, 2024
  • Nyall Engfield

Response to Trademark BOLIDO Office Action - Likelihood of Confusion rejection example.

The office action is here.

The Examining Attorney has refused registration of Applicant’s standard character
BOLIDO mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that the mark is likely to be confused with METEOR in Registration No. 5,109,381. For the following reasons, Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider the statutory refusal and allow registration of Applicant’s mark.

Likelihood of confusion between two marks at the USPTO is determined by a review of all of the relevant factors under the du Pont test. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Although the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services, “there is no mechanical test for determining likelihood of confusion and ‘each case must be decided on its own facts.’” TMEP § 1207.01 (citing du Pont, 476 F.2d at 1361, 177 USPQ at 567). Each of the thirteen du Pont factors may be considered in weighing likelihood of confusion, if raised, and any one may be dispositive. See TMEP § 1207.01. In some cases, a
determination that there is no likelihood of confusion may be appropriate, even where the marks share common terms and the goods/services relate to a common industry, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use
on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use. Id.

Table 1: Relevant Marks and Goods
Applicant’s Mark Cited Mark
Class 14: Timepieces and chronometric
Class 14: Precious stones; cut diamonds;
jewellery [sic], excluding watches, containing
cut diamonds

Here, Applicant seeks registration of the standard character mark BOLIDO for
“Timepieces and chronometric instruments” in International Class 14. Applicant’s mark has been refused registration based on an alleged likelihood of confusion with the standard character mark METEOR for “Precious stones; cut diamonds; jewellery [sic], excluding watches, containing cut diamonds” in International Class 14. See Table 1, above. There is no likelihood that consumers will be confused as to the source of the goods in connection with each of these two marks because Applicant’s mark is different in appearance, sound, and commercial impression. Further,
the goods used in connection with Applicant’s mark and the cited mark are different,
noncompetitive, and marketed toward different consumers. Therefore, Applicant respectfully requests the Examining Attorney withdraw his refusal and permit Applicant’s mark to be published on the Principal Register.

The Marks are Different in Sound, Appearance, Meaning, and Commercial Impression

Under du Pont, marks are compared for similarity or dissimilarity in their entireties as to appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). “Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. See, e.g., In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion).

The Examining Attorney contends that under the doctrine of foreign equivalents, the
ordinary purchaser in the United States “would likely stop and translate” the term “BOLIDO” into its English-language equivalent “because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States.” See Office Action of July 13, 2018, p. 2. Applicant disagrees with the Examining Attorney. Here, the doctrine of foreign equivalents will not be applied because it is unlikely that the average American consumer will translate the foreign mark. See In re Tia Maria Inc., 188 USPQ 524 (TTAB 1975) (finding it unlikely that a person who had purchased AUNT MARY’S canned fruits and vegetables from a supermarket would, upon dining at the TIA MARIA restaurant surrounded by Mexican décor and serving Mexican food, translate “Tia Maria” into “Aunt
Mary” and then mistakenly assume that both goods and services originated from the same source).

Similarly, it is unlikely that a consumer purchasing Registrant’s METEOR single cut
diamonds and/or precious stones (who is most likely a manufacturer of fine jewelry, such as engagement rings, necklaces, diamond rings, and bracelets), would upon purchasing Applicant’s timepieces that are not raw materials but a complete good sold to consumers of watches mistakenly assume that the goods originated from the same source. Compare Registrant’s website with Applicant’s website

In addition, Applicant’s and Registrant’s mark are different in appearance, sound, and commercial impression. Applicant’s mark is BOLIDO, which is a completely different term from Registrant’s METEOR mark. Applicant’s mark begins with the letter “B” and ends in the letter “O” and features a repetitive “O” sound in the beginning and end of the mark, which creates an alliterative and playful cadence. Registrant’s mark, on the other hand, shares only one common letter with Applicant’s mark – the letter “O” – which offers no alliterative elements to
Registrant’s mark.

The commercial impressions of the marks also differ. Registrant’s METEOR mark
conveys the idea that Registrant’s single cut diamonds have rounded edges similar to a meteorite.

In contrast, Applicant’s mark alludes to a metaphor about Applicant’s brand and timepieces: “A luminary that crosses between the somewhat immovable fixed stars of established brands on thewatch firmament.” See Exhibit A. Alternatively, the term “BOLIDO” translates to “racing car” as well as “powerboat; speedboat.” See Exhibit B. The alternative definitions convey the idea that Applicant’s timepieces are luxury watches that exude sophistication and wealth, similar to a racing car or powerboat. Neither of the commercial impressions of Applicant’s mark expresses a characteristic about Applicant’s timepieces in terms of shape, size, or composition.

As a result, when the cumulative effect of these significant differences between
Applicant’s BOLIDO mark and the cited METEOR mark is given fair weight, particularly in light of the differences in sound and appearance as well as the diverse commercial impressions between the marks, this factor weighs against the likelihood of confusion refusal.

Lack of Overlap of the Goods

Applicant is seeking to register its mark for timepieces and chronometric instruments, whereas Registrant has its mark registered for precious stones; cut diamonds; jewellery [sic], excluding watches, containing cut diamonds. On their face, the goods of Applicant appear to be distinct from the goods of Registrant in terms of their character and use. In addition, Applicant’s website clearly illustrates that Applicant sells timepieces and chronometric instruments. See Exhibit C.

Registrant, on the other hand, describes itself as “a renowned world leader in the field of straight edged diamond manufacturers and widely known for its innovative special cuts.” See Exhibit D. Additionally, Registrant’s diamonds are “perfectly designed to be inlaid into rings, necklaces, and bracelets.” See id. Neither party manufactures, sells, or markets the other’s products.
Registrant’s goods are a feature of a consumer jewelry product; the cut diamonds are not likely to be sold on their own. Diamond cutting is a separate process that companies, such as Registrant, specialize in and the goods attained from the process are purchased by sophisticated consumers. Likewise, the consumers purchasing Registrant’s goods have a specific diamond shape in mind, such as the METEOR® cut. Registrant’s goods are, therefore, generally custom made to a specific consumer’s preference. See Exhibit D.

Although both goods are found in the jewelry industry, this industry is enormously broad, so this commonality simply is too tenuous of a connection upon which to find that the goods are commercially related. The goods are non-competitive and clearly have significant differences in utility and essential characteristics. Further, Registrant’s identification specifically excludes watches, and Applicant produces and sells completed timepieces and chronometric instruments. Registrant’s and Applicant’s goods are, therefore, not competitive, overlapping, or related
in any way, as Applicant does not manufacture, sell, or market precious stones and cut diamonds.

Accordingly, Applicant’s goods and the cited goods are clearly different and are not similar enough to create a likelihood of confusion in the minds of the consumers.
Balancing the Factors In sum, the differences between the commercial impressions created by Applicant’s mark and the cited mark, as well as the differences in appearance and sound are sufficient to prevent a likelihood of confusion. Further, Applicant’s goods are separate and distinct from the cited Registrants’ goods and are not likely to be purchased by the same consumers. Registrant’s
identification specifically excludes “watches containing cut diamonds,” further disassociating Applicant’s timepieces and chronometric instruments from Registrant’s goods. Accordingly, Applicant respectfully requests that the statutory refusal be withdrawn and that the application be permitted to proceed to publication

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