Rocket Box.” However, in the Jacks Logo, This Wording Is a Minimal Element of the Mark
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1032893 Filing date: 01/31/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 88360870 Applicant Rocket Box Inc. Applied for Mark ROCKET BOX JACKS QUALITY Correspondence BRIAN TUCKER Address KIRTON MCCONKIE 36 S STATE STREET, #1900 SALT LAKE CITY, UT 84111 UNITED STATES [email protected], [email protected], [email protected] 801-239-3147
Submission Appeal Brief Attachments JACKS Logo - Appeal Brief.pdf(1078015 bytes ) Rocket Box Exhibits A-E.pdf(3577783 bytes ) Rocket Box Exhibits F-J.pdf(5566013 bytes ) Rocket Box Exhibits K-M.pdf(5166746 bytes ) Rocket Box Exhibits N-P.pdf(3479562 bytes ) Filer's Name Brian Tucker Filer's email [email protected], [email protected] Signature /Brian Tucker/ Date 01/31/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Mark:
Serial No.: 88/360,870
Applicant: Rocket Box Inc.
Examiner: Shaila E. Lewis Law Office 114
APPLICANT’S APPEAL BRIEF
Applicant respectfully requests that the Trademark Trial and Appeal Board (TTAB) reverse the Examiner’s final refusal under Section 2(d) because there is no likelihood of confusion between Applicant’s mark (the “Jacks Logo”) and the Rocket Box mark that is the subject of U.S. Trademark Registration No: 3,146,503 (the “Rocket Box Registration”).
I. Relevant Facts The Rocket Box Registration is owned by Mattel, Inc. (“Mattel”), the owner of the Hot Wheels brand, and covers “toy vehicles and accessories therefor.” As evidenced by each specimen Mattel has relied on to establish use of the Rocket Box mark, Mattel uses Rocket Box as a name of a particular Hot Wheels car. Exhibit A provides an example this use. Mattel’s latest specimen is also reproduced below.
Applicant, Rocket Box Inc., has been selling jacks under the Jacks Logo since at least as early as March 1, 2016. Exhibit B is a printout of Applicant’s Amazon listing on November 5, 2019 and includes reviews for verified purchases dating back to 2016. In addition to selling on Amazon, Applicant also sells its jacks under the Jacks Logo on the websites www.rocketboxjacks.com.
II. Prosecution History Applicant previously attempted to register the Jacks Logo by filing U.S. TM Appl. Ser. No. 86/958,447 on March 30, 2016. This attempt, which Applicant handled pro se, was unsuccessful. Applicant filed the present application on March 28, 2019 based on use of the Jacks Logo dating back to at least March 1, 2016. In the application as filed, the goods were defined as “Tabletop games” in class 028. On April 3, 2019, Applicant submitted a preliminary amendment
2 to limit the goods to “Tabletop games, namely, jacks.” Accordingly, Applicant is pursuing registration of the Jacks Logo only for jacks. On June 13, 2019, the Office issued a non-final office action (the “June 13 Office Action”) in which it presented a section 2(d) refusal based on a likelihood of confusion with the Rocket Box mark which is the subject of the Rocket Box Registration. As indicated above, the Rocket Box Registration only lists goods of “toy vehicles and accessories therefor.” In the June 13 Office Action, the Office concluded without support that the dominant element in the Jacks Logo is “Rocket Box” and, based on this unsupported conclusion, determined that the marks were similar. The Office also concluded, based only on a few websites that sell a wide variety of goods, that the respective goods were sold or provided through the same channels and used by the same classes of consumers in the same fields of use and therefore concluded that the goods are related. Notably, in the June 13 Office Action, the Office failed to consider the goods as amended. Specifically, the Office’s analysis was based on goods of “Tabletop games” rather than “jacks.” Applicant responded to the June 13 Office Action by pointing out that the Office had failed to consider the correct goods, had incorrectly concluded that Rocket Box is the dominant element, had failed to consider the Jacks Logo as a whole and had failed to compare the respective goods. On July 19, 2019, the Office issued another non-final office action (the “July 19 Office Action”) in which it maintained the likelihood of confusion refusal. The Office again concluded, without support, that Rocket Box is the dominant portion of the Jacks Logo and largely ignored all other aspects of the Jacks Logo based on the mistaken belief that generic or descriptive elements of a mark need not be considered when comparing marks for similarity. The Office also concluded that toy cars and jacks are similar based merely again on a few websites that sell a wide variety of goods. Applicant responded to the July 19 Office Action by submitting evidence showing that the term “Rocket Box” is commonly used, explaining five significant differences between the respective marks, citing significant case law that directly contradicts the Office’s position and pointing out various facts specific to this case that the Office had failed to consider. On October 17, 2019, the Office issued a final office action (the “October 17 Office Action”) in which the Office again maintained the likelihood of confusion refusal. The Office
3 again failed to consider the Jacks Logo as a whole and largely ignored the significant differences between the marks. The Office also dismissed the significant evidence of third-party use by simply stating that the use was in connection with different goods. Applicant submitted a request for reconsideration in which it submitted additional evidence of third-party use of Rocket Box, including significant evidence of use in conjunction with toys. Applicant also explained how the Office had failed to rebut Applicant’s arguments in the previous response. Throughout prosecution, Applicant has repeatedly pointed out that the Office has performed an analysis in the abstract and largely ignored the facts specific to this case – facts that show that there is no likelihood of confusion.
III. There is no likelihood of confusion
a. Governing Standards In the present case, the ultimate inquiry is “whether there is a likelihood of confusion as to the source or sponsorship of the goods … because of the marks used thereon.” (TMEP 1207.01). In the context of this case, this inquiry can be phrased as whether there is a likelihood that consumers, upon seeing the Jacks Logo on jacks, will be confused into believing that Mattel is the source of the jacks or sponsors the jacks. Notably, “it is the examiner's burden to provide evidence in support of the refusal.” See In re Micros Systems, Inc., 2015 WL 1276589 (TTAB 2015); In re Iris Data Services, Inc., Serial No. 86455558 (TTAB 2017). In analyzing a likelihood of confusion refusal, the Board should consider all relevant factors. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997). These factors include: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. 2. The similarity or dissimilarity, and nature, of the goods or services as described in an application or registration or in connection with which a prior mark is in use. 3. The similarity or dissimilarity of established, likely to continue trade channels. 4. The conditions under which, and buyers to whom, sales are made, i.e., “impulse” vs.
4 careful, sophisticated purchasing. 5. The fame of the prior mark (sales, advertising, length of use). 6. The number and nature of similar marks in use on similar goods. 7. The nature and extent of any actual confusion. 8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. 9. The variety of goods on which the mark is or is not used (house mark, “family” mark, product mark). 10. The market interface between applicant and the owner of a prior mark: (a) a mere “consent” to register or use; (b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and goodwill of the related business; (d) laches and estoppel attributable to the owner of prior mark and indicative of lack of confusion. 11. The extent to which applicant has a right to exclude others from use of its mark on its goods. 12. The extent of potential confusion, i.e., whether de minimus or substantial. 13. Any other established fact probative of the effect of use.
b. Analysis of the Factors
i. The dissimilarity of the marks in their entireties weighs against a finding of likelihood of confusion
“Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial impression created by each mark.” TMEP 1207.01(b)(iii). “The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their
5 entireties. Indeed, this type of analysis appears to be unavoidable.” TMEP 1207.01(b). “The comparison of composite marks must be done on a case-by-case basis, without reliance on mechanical rules of construction.” TMEP 1207.01(c)(ii). “Often, the examining attorney must determine whether a likelihood of confusion exists between composite marks that consist of a design element combined with words and/or letters. Frequently, the marks at issue are similar in only one element. Although it is not proper to dissect a mark, if one feature of a mark is more significant than another feature, greater weight may be given to the dominant feature for purposes of determining likelihood of confusion.” Id. This guidance reinforces that the Office must perform a comparison – with careful consideration – between the marks in their entireties but also notes that greater weight may be given to a dominant feature “for purposes of determining likelihood of confusion.” The Office has yet to perform a comparison of the marks in their entireties. A careful consideration of the marks in their entireties reveals that the only common element is the wording “Rocket Box.” However, in the Jacks Logo, this wording is a minimal element of the mark. It is much smaller in size then the stylized wording “Jacks,” it is smaller than or at least no larger than the wording “Quality” and the various sets of stars, and it is embedded within the large black ring over which the wording “Jacks” is superimposed. The Office has repeatedly failed to carefully consider these elements of the Jacks Logo including the commercial impression that these elements create. “Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.” TMEP 1207.01(b)(iii). In this case, the Jacks Logo includes the common wording “Rocket Box” and the additions of: (1) the large, stylized wording “Jacks;” (2) the large ring over which the wording “Jacks” is superimposed and within which the wording “Rocket Box” is embedded; (3) a set of three stars each of which is larger than the letters in the wording “Rocket Box;” (4) the wording “Quality” that is approximately the same size as the wording “Rocket Box” but is centered within the Jacks Logo below the wording Jacks; and (5) a set of eight stars that are approximately the same size as the letters in the wording “Rocket Box” but encompass a larger area of the Jacks Logo than the wording “Rocket Box.”
6 A careful consideration must determine whether these additions cause the Jacks Logo to convey a significantly different commercial impression from the Rocket Box mark. Applicant submits that the five significant dissimilarities identified above outweigh the common wording and play a significant role in creating a different commercial impression. Also, as addressed in greater detail below, the evidence of record reveals that Rocket Box – the only common element – is weak and not likely to be perceived by purchasers as distinguishing source. In its refusals, the Office has argued that “Rocket Box” is the dominant element in Applicant’s mark. In particular, the Office states: “In the present case, the marks are similar in commercial impression because the dominant element in each mark is identical, namely, “Rocket Box.” Based on this conclusion, the Office further concludes that the marks are similar. However, the Office fails to adequately support its conclusions and instead relies on conclusory statements and citations to general case law. For example, the Office argues: Applicant argues that the mark was dissected inappropriately in the determination that the marks are similar. However, as stated previously, 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)).
Notably, in this argument, the Office only references general rules and does not perform any type of analysis that is specific to the facts of this case. Applicant acknowledges that words are “normally” given greater weight than a design, but the blind application of a “normal” rule contravenes the mandate that “each case must be decided on its own facts.” TMEP 1027.01. The Office also argues: Further, 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,
7 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In the present case, the word “JACKS” is generic because the identified goods are jacks. A generic term is a common name that the relevant public uses or understands primarily as referring to the category or genus of the goods and/or services in question. In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c). Generic terms are by definition incapable of indicating a particular source of goods and/or services and cannot be registered as trademarks or service marks. In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)); see TMEP §1209.01(c). Registering generic terms “would grant the owner of [a] mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d at 1569, 4 USPQ2d at 1142. Therefore, the word “JACKS” has no source-identifying significance. Even if the word “QUALITY” were considered to be source- identifying, it is descriptive and has less significance than the wording “ROCKET BOX.” Therefore, the dominant feature of the mark is “ROCKET BOX.”
In this argument, the Office makes determinations based on the facts of the case – that JACKS is generic of the goods and that QUALITY is descriptive – but then proceeds to misapply the law. In particular, the “typical” rule is that generic and descriptive matter is less significant when comparing marks, but that does not mean that the Office can ignore generic or descriptive matter in determining whether marks are similar. It also does not mean that the other elements are automatically the dominant ones. To support ignoring JACKS and QUALITY in the comparison, the Office cites case law which establishes that generic terms cannot be registered. Yet, registering generic terms is entirely different from determining whether two marks are similar. Applicant is not trying to register the generic term JACKS or the allegedly descriptive term QUALITY. To the contrary, Applicant is trying to register a mark that includes JACKS, QUALITY, other terms and various design elements – i.e., a composite mark. Furthermore, the Federal Circuit has held that a disclaimed portion of a mark can be the dominant portion for purposes of a likelihood of confusion analysis. “[W]e previously have found that the dominant portion of a composite word and design mark is the literal portion, even where the literal portion has been disclaimed.” In re Viterra Inc., 671 F.3d 1358, 1366–67 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570–71 (Fed.Cir.1983) (finding that the term “GIANT” was the dominant portion of a mark consisting of
8 the words GIANT HAMBURGERS with a large background design, even though the applicant disclaimed “GIANT HAMBURGERS.”)). Accordingly, it was improper for the Office to conclude that the much less prominent “Rocket Box” rather than the large and centered “Jacks” was automatically the dominant portion of the Jacks Logo simply because jacks may be generic. Simply put, the evidence of record indicates that no single element of the Jacks Logo is dominant. The governing law mandates that the marks be compared in there entireties and would allow greater weight to be given to one element when it is the dominant element. Yet, there is ample evidence that Rocket Box is not the dominant element of the Jacks Logo. The Office therefore committed legal error in concluding that Rocket Box is the dominant element. The error in the Office’s position is further highlighted in the following argument: The third party marks cited by applicant are used in connection with different goods, which means the mark is not diluted or weak. Moreover, third- party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). The existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). Therefore, they do not warrant withdrawal of the refusal.
This argument, which is addressed in greater detail below, misses the mark. Applicant cited the third party marks as evidence that the term Rocket Box is commonly used. The third party marks contradict the Office’s unsupported conclusion that Rocket Box is the dominant portion of Applicant’s mark. Applicant is not attempting to register Rocket Box. To the contrary, Applicant is attempting to register a composite mark that includes the term Rocket Box among its many elements. “Whether a mark is classified as ‘strong’ or ‘weak’ is a very important element in deciding likelihood of confusion.” 4 McCarthy on Trademarks and Unfair Competition § 23:48 (5th ed.). “If the common element of conflicting marks is a word that is “weak” then this reduces the likelihood of confusion.” Id. “Determining that a mark is weak means that consumer confusion has been found unlikely because the mark's components are so widely used
9 that the public can easily distinguish slight differences in the marks, even if the goods are related.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir. 1987). The only similarity between the Jacks Logo and the Rocket Box mark is the term “Rocket Box.” Yet, for the reasons provided below, Rocket Box is commonly used with a variety of toys and other goods and services. “Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if … the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.” TMEP 1207.01(b)(iii). The term “Rocket Box” is not the dominant element of the Jacks Logo and would not be perceived by purchasers as distinguishing source because many other toys manufacturers and retailers use the term. Furthermore, as addressed more fully below, the common use of this term is due to its descriptive nature – rocket box describes an explosive, speedy, quick, etc. characteristic. In short, consumers are not likely to perceive Rocket Box alone as a source identifier. By focusing its analysis on the term Rocket Box while largely ignoring all other elements of the Jacks Logo, the Office committed legal error. The Office must consider the Jacks Logo in its entirety and must perform an analysis based on the facts specific to this case. Once such an analysis is performed, it is clear that the dissimilarities between the respective marks weighs against a finding of likelihood of confusion.
ii. The respective goods and their channels of trade are not as similar as the Office suggests
Although jacks and toy cars are both toys, that is where the similarities end. Jacks are a vintage toy and are not commonly sold in the same stores where Hot Wheels toy cars are sold. In fact, Mattel apparently does not even sell jacks even though it sells a wide variety of toys. The Office’s evidence even supports a conclusion that jacks are different from Hot Wheels toy cars. The Office relies on screenshots of crackerbarrell.com, orientaltrading.com, mastermindtoys.com, tintoyarcade.com and iharttoys.com, none of which sell Hot Wheels toy cars. In fact, many of these websites focus on vintage toys such as jacks and do not carry any mainstream brands like Hot Wheels. For example, tintoyarcarde.com advertises itself as selling “classic retro toys,” and crackerbarrel.com advertises itself as an “old country store.” Two of
10 these websites, mastermindtoys.com and iharttoys.com are not located in the US and therefore provide little if any evidentiary value. Finally, orientaltrading.com is a unique party supply store. In short, the websites the Office relies on do not support a finding that Mattel’s Hot Wheels Rocket Box toy cars and Applicant’s jacks travel in the same trade channels. To the contrary, the evidence shows that jacks are not sold in typical toy stores but only in specialty stores that do not carry Hot Wheels. In short, the public knows that jacks, as a vintage toy, are not commonly sold in typical toy stores or department stores, but are sold in specialty stores. The dissimilarities between toy cars and jacks and their channels of trade weigh against a likelihood of confusion. Even assuming, arguendo, that jacks and toy cars are related, the inquiry should not end there. Many goods and services are related in some way. There will always be internet evidence to show that goods are sold on the same website. For example, Amazon sells virtually everything. The proper inquiry must consider whether the goods are sufficiently related to create a likelihood of confusion. This inquiry is not performed in isolation but in view of the similarities between the respective marks. “The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.” TMEP 1207.01. This legal maxim can be phrased in a case-specific way as follows: “The issue is not whether [the Jacks Logo and the Rocket Box mark] themselves, or [the jacks and toy cars] offered under the marks, are likely to be confused, but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the [jacks] because of [the Jacks Logo] used thereon.” “The facts in each case vary and the weight to be given each relevant du Pont factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.” TMEP 1207.01(a)(iv). The facts in this case indicate that consumers will not be confused into believing that Applicant’s jacks are associated with or sponsored by Mattel. In short, Applicant has provided evidence to rebut the Office’s position, namely, that jacks are a vintage toy that are commonly sold at specialty stores where Hot Wheels cars are not.
11 The Office has provided no evidence to rebut the argument that vintage toys are different. Therefore, at best, this factor is neutral and may even weigh against a finding of likelihood of confusion.
iii. Consumers exhibit care when purchasing jacks
The evidence of record supports a finding that consumers do not buy jacks on an impulse. For example, most of the comments to the Amazon listing in Exhibit B reveal that consumers are older individuals that played jacks as children “back in the 1950’s or 1960’s” and even found it “hard to [find jacks] in other places.” This evidence supports a finding that consumers will exhibit at least some care in searching for jacks that resemble the “ones [they] had growing up.” This evidence also reinforces that jacks are not sold through the same channels of trade as Mattel’s Hot Wheels cars. In contrast, the Office has provided no evidence to support a finding that consumers purchase jacks on an impulse. Therefore, this factor weighs against a finding of likelihood of confusion.
iv. There is no evidence that Mattel’s Rocket Box mark is famous
The Office has provided no evidence that Mattel’s Rocket Box mark is famous. In fact, the only relevant evidence of record reveals that consumers may not even view Rocket Box as a mark. For example, in Exhibit A and in each specimen Mattel has submitted, Rocket Box is merely a name of a Hot Wheels car and does not appear prominently on any of the packaging. Applicant acknowledges that the validity of a registration cannot be challenged in this context, but also notes that all relevant facts must be considered. It is also worth noting that Exhibit A indicates that the Hot Wheels car named Rocket Box is #1,358,827 in Amazon’s toys and games best sellers rank and #21,781 in Amazon’s children’s die-cast vehicles best sellers rank. These rankings certainly do not support a finding that Mattel’s Rocket Box mark is famous. Accordingly, this factor does not support a finding of likelihood of confusion.
v. The Rocket Box mark is used in conjunction with a variety of toys and other goods
12 The evidence of record reveals that the term Rocket Box is commonly used when describing toys. Exhibit C, which is a listing for the popular American Girl doll, uses the terms “rocket box” and “rocket set” to identify and describe the doll. Exhibit E, which is a listing for a Batman action figure, uses the term “rocket box” to identify the action figure. Exhibit G, which is a listing for a favor box to distribute toys/gifts at a child’s party, uses the term “rocket box” to identify the favor box. Exhibit H, which is a listing for a toy rocket, uses the term “rocket box” to identify the toy rocket.1 The evidence of record also reveals that the term Rocket Box is commonly used in conjunction with other goods and services. Exhibit D shows the term Rockit Box used for analytics services. Exhibit F shows the term Rocket Box used for a bag for carrying ammunition boxes. Exhibit I shows the term Rocket Box used for fireworks. Exhibit K shows the term Rocket Box used for cigarette rolling machine. Exhibit L shows the term Rocket Box used for amplifiers. Exhibit M shows the term Rocket Box used for car accessories. Exhibit N shows the term Rocketbox used for jewelry. Exhibit O shows the term Rocket Box used for ammunition. Exhibit P shows the term Rocket Box used for bat boxes. Although these goods and services may not be overly similar to toys, in each case, the term rocket box is used in a descriptive fashion to represent speed, explosion, energy, etc. In Mattel’s case, the Rocket Box mark is also used with the same descriptive meaning – i.e., a speedy car. In the case of Yakima’s Rocket Box car topper, Applicant submits that the goods are similar to the toy cars covered by the Rocket Box Registration. Yakima’s Rocket Box car topper
1 Although not of record, the following websites also reveal substantial third-party use of the term Rocket Box in conjunction with toys and related goods: https://www.zazzle.com/rocket+box+gifts; http://rocketboxhk.com/; and https://www.etsy.com/market/rocket_box. 13 is an accessory for a car. The Rocket Box Registration covers accessories for toy cars. Given that toy cars are routinely made to look like and represent actual cars, there is a direct connection between toy cars and actual cars. In view of this significant third-party use, the Rocket Box mark is weak and should be given a narrow scope of protection. TMEP 1207.01(d)(iii) states that “third-party registrations [and use] may be relevant to show that a mark or a portion of a mark is … so commonly used that the public will look to other elements to distinguish the source of the goods or services. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373–1374, 116 U.S.P.Q.2d 1129, 1136 (Fed. Cir. 2015) (“[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.”). “Determining that a mark is weak means that consumer confusion has been found unlikely because the mark's components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir. 1987). The evidence of record reveals that the Rocket Box mark is weak because it is commonly used in conjunction with toys and cars and is used with the same connotation on a wide variety of goods and services. This factor weighs strongly against a finding of likelihood of confusion. In fact, Applicant submits that this factor combined with the differences between the respective marks is dispositive.
vi. There is no evidence of actual confusion in spite of long-term concurrent use
Applicant has been selling its jacks under the Jacks Logo for nearly four years. To date, Applicant is unaware of any instances of confusion. Additionally, the only evidence of record is the fact that both marks have been concurrently used for nearly four years. Absent any evidence of actual confusion, these factors must weigh against a finding of likelihood of confusion.
vii. Applicant’s name is Rocket Box and Applicant has been using the Rocket Box mark for other goods and services
Although Applicant has not attempted to register the Rocket Box mark, it has been using
14 the Rocket Box mark to operate a retail website and to provide a number of goods.2 In contrast, the evidence shows that Mattel has only used the Rocket Box mark as a name of a particular Hot Wheels car. Applicant’s breadth of use, including the fact that Rocket Box Inc.3 is Applicant’s name, weighs against a finding of likelihood of confusion.
viii. Laches is a factor
As addressed above, Applicant has been using the Jacks Logo since at least as early as March 1, 2016. Through this use, Applicant’s jacks have become one of the top sellers on Amazon. Applicant has therefore established significant goodwill and brand awareness in the Jacks Logo. Applicant also previously attempted to register the Jacks Logo on March 30, 2016 based on current use of the Jacks Logo. See U.S. TM. Appl. No. 86/958,447. For nearly four years, Mattel has had at least constructive notice of Applicant’s use of the Jacks Logo but has taken no action. Given that Mattel is a large and sophisticated company with thousands of trademarks, Mattel’s lack of action suggests that there is no confusion. Applicant’s continuous use of the Jacks Logo and the resulting goodwill combined with Mattel’s lack of action weighs against a finding of likelihood of confusion.
ix. Through its use of the Jacks Logo, Applicant has obtained the right to exclude others from using the Jacks Logo on jacks
Given Applicant’s nearly four years of continuous use of the Jacks Logo and the success in the marketplace of its jacks that bear this mark, Applicant has obtained the right to exclude others from using the Jacks Logo on jacks. This is true regardless of whether the Office agrees to register the Jacks Logo. As a practical consideration, Applicant notes that a primary reason for attempting to register the Jacks Logo is to enable Applicant to register the Jacks Logo on Amazon’s Brand Registry so that it can stop others from copying the Jacks Logo. In other words, malicious third parties know the value and brand recognition of the Jacks Logo and are using it to divert sales from Applicant on Amazon.
2 www.rocketboxproducts.com 3 Rocket Box Inc. was established in 2014. 15 Consumers recognize the Jacks Logo as a source identifier for Applicant. This factor weighs strongly against a finding of likelihood of confusion.
x. Any potential confusion would be de minimus
Applicant has limited the goods so that there is no overlap with the goods listed in the Rocket Box Registration. The evidence also reveals that jacks are not sold through the same channels as Hot Wheels. The evidence further reveals that Mattel’s use of the Rocket Box mark is only as a name of a particular Hot Wheels car. Mattel’s Rocket Box mark is therefore not a family mark (Mattel) or a product mark (Hot Wheels), but a weak tertiary mark. Furthermore, the evidence reveals extensive third-party use of the Rocket Box mark for toys and third-party use of the Rocket Box mark with the same descriptive connotation in which Mattel uses the Rocket Box mark. In view of these facts, to the extent some consumers could be confused, such confusion would be de minimus. For example, when viewing the Jacks Logo on jacks, it would be extremely unlikely that a consumer would think that Mattel is the source of the jacks. There are hundreds of Hot Wheels cars that each have a name. Merely because the Jacks Logo incorporates one of these names as one of various elements in the logo does not create a likelihood that consumers will think Applicant’s jacks are in any way related to Mattel or the Hot Wheels brand. Therefore, this factor weighs against a finding of likelihood of confusion.
IV. Conclusion
With each of the Du Pont factors, the evidence contradicts the Office’s position. The Office has not provided any evidence to rebut the substantial evidence that Rocket Box is weak due to its extensive use by third parties. The Office has also failed to rebut Applicant’s arguments that Rocket Box is not the dominant element of the Jacks Logo. The Office has also failed to rebut Applicant’s arguments that the marks in their entireties are quite different and convey significantly different commercial impressions. The Office has also failed to rebut Applicant’s argument and evidence that
16 vintage toys such as jacks are distributed through different channels of trade from mainstream toys such as Hot Wheels cars. The Office has further failed to present any evidence to address any of the other factors. In view of the evidence of record, there is not a single factor that clearly weighs in favor of a finding of likelihood of confusion. In contrast, most of the factors clearly weigh against such a finding. For those factors that do not clearly weigh against a finding of likelihood of confusion, there is substantial – and unrebutted – evidence that the factors weigh against such a finding. In short, the Office has not considered the facts in presenting its likelihood of confusion refusal. Instead, the Office has relied on generic citations to case law that are not supported by or relevant to the facts specific to this case. Once all the facts are carefully considered, it is clear that consumers would never believe that jacks bearing the Jacks Logo are somehow associated with Mattel. For each of these reasons, Applicant respectfully requests that the likelihood of confusion refusal be withdrawn.
17 DATED this 31st day of January, 2020.
Respectfully submitted,
Kirton McConkie
By: /Brian D. Tucker/ Brian D. Tucker
Kirton McConkie, P.C. 36 S. State Street, #1900 Salt Lake City, Utah 84111 801-239-3147 [email protected] Attorney for Applicant Rocket Box Inc.
18 Exhibit A 11/5/2019 Amazon.com: Mattel Hot Wheels 2005 Blings 1:64 Scale White Rocket Box Die Cast Car #036: Toys & Games
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Mattel Hot Wheels 2005 $5.87 Blings 1:64 Scale White & FREE Shipping Rocket Box Die Cast Car Get it as soon as Nov. 7 - 13 when #036 you choose Expedited Shipping at by Mattel checkout.
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Product description https://www.amazon.com/Mattel-Hot-Wheels-2005-Blings/dp/B000JUWTXM/ref=sr_1_1?keywords=mattel+rocket+box&qid=1572997404&s=toys-and-… 2/5 11/5/2019 Amazon.com: Mattel Hot Wheels 2005 Blings 1:64 Scale White Rocket Box Die Cast Car #036: Toys & Games Mattel Hot Wheels 2005 Blings 1:64 Scale White Rocket Box Die Cast Car #036
Product information
Package Dimensions 7.8 x 4.5 x 2 inches Feedback
Item Weight 1.6 ounces If you are a seller for this product, would you like to suggest updates through seller support? Shipping Weight 1.6 ounces (View shipping rates Would you like to tell us about a lower price? and policies)
ASIN B000JUWTXM
Best Sellers Rank #1,358,827 in Toys & Games (See Top 100 in Toys & Games) #21,781 in Children's Die-Cast Vehicles
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Rocket Box Jacks Game: Retro, $9.99 New Vintage, Classic Game of FREE Shipping on orders over Jacks, Gold and Silver Toned $25.00 shipped by Amazon or get Jacks, Two Red Bouncy Balls Fast, Free Shipping with Amazon Prime & FREE Returns and Set of Instructions, Fun for Want it Thursday, Nov. 7? Order Kids and Adults of All Ages. within 7 hrs 11 mins and choose by Rocket Box Two-Day Shipping at checkout. 310 ratings Details | 26 answered questions In Stock. List Price: $12.99 Price: $9.99 FREE Shipping on orders over Qty:1Qty: 1 $25.00 shipped by Amazon or get Fast, Free Shipping with Amazon Prime & FREE Returns Add to Cart You Save: $3.00 (23%) Buy Now 10 high quality gold and silver colored jacks 2 red bouncy balls retro, vintage packaging Sold by Rocket Box and Fulfilled full set of instructions included by Amazon. reusable, portable container
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Product description
A classic, high quality set of 10 jacks in vintage, retro theme. Enjoyable and fun! The game includes 2 red bouncy balls, 5 silver toned jacks, 5 gold toned jacks and a full set of instructions. The jacks are sturdy and the gold and silver coloring are an enjoyable feature that helps to set this lovely set of jacks apart from the rest. The vintage packaging closes snugly and can be used to store and carry the game about. Adults and children alike will enjoy this classic, portable game also known as onesies, knucklebones, jackstones, jackrocks and fivestones.
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Product Dimensions 3 x 3 x 2.8 inches Feedback
Item Weight 3.2 ounces If you are a seller for this product, would you like to suggest updates through seller support? Shipping Weight 3.2 ounces (View shipping rates and Would you like to tell us about a lower price? policies)
ASIN B01HT61U3I
Manufacturer recommended age 8 years and up
Best Sellers Rank #5,056 in Toys & Games (See Top 100 in Toys & Games) #278 in Toys & Games Activities & Amusements https://www.amazon.com/Rocket-Box-Jacks-Game-Instructions/dp/B01HT61U3I/ref=sr_1_3?crid=4GEP6ZH9HFJJ&keywords=rocket+box+jacks+gam… 2/7 11/5/2019 Amazon.com: Rocket Box Jacks Game: Retro, New Vintage, Classic Game of Jacks, Gold and Silver Toned Jacks, Two Red Bouncy Ball…
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