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.