HOOKED FOR LIFE

Response to Section 2(d) Refusal — Likelihood of Confusion

Response to Section 2(d) Refusal — U.S. Registration No. 5281117 (Class 25 Only)

The Office Action refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), as to International Class 25 only, based on U.S. Registration No. 5281117 for HOOKED FOR LIFE (stylized, with design). Applicant respectfully traverses the refusal. Because the refusal is expressly partial, the following argument is confined to Class 25; the refusal does not apply to, and this argument does not address, the remaining classes.

Likelihood of confusion is determined on a case-by-case basis under the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), and, as the Office Action acknowledges, "not all of the DuPont factors are relevant or of similar weight in every case." In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). A single factor may be dispositive. Kellogg Co. v. Pack'em Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). On this record, the sixth DuPont factor — the number and nature of similar marks registered for similar goods — together with the resulting narrow scope of protection accorded the cited mark, weighs decisively against a likelihood of confusion. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005); TMEP §1207.01(d)(iii).

A. The shared wording is diluted on the register for clothing, and the cited registration is therefore entitled to only a narrow scope of protection.

Evidence that a term is commonly registered by third parties for the same or similar goods is "relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39 (Fed. Cir. 2015). Such third-party registration evidence is "powerful on its face," even without accompanying evidence of the extent of actual use. In re Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGAA, 797 F.3d 1363, 1373-74 (Fed. Cir. 2015). Where a shared element is weak, consumers are conditioned to look to other elements of the marks — additional wording, stylization, and design — to distinguish source, and comparatively small differences suffice to avoid confusion. Juice Generation, 794 F.3d at 1338-39; Jack Wolfskin, 797 F.3d at 1373-74.

Submitted as Exhibit A are twelve third-party registrations, each verified live on the USPTO register, for marks containing HOOKED — several also containing LIFE — covering Class 25 clothing of the very types identified in the application and the cited registration. The most probative entries include:

• Reg. No. 3954904 — HOOKED — for clothing including shirts, t-shirts, sweatshirts, and hats (Exhibit A, item 10). The bare term HOOKED, standing alone, is registered for goods overlapping both applicant's and registrant's identifications.
• Reg. No. 6108884 — CAST A LOT HOOKED ON LIFE — for shirts, caps being headwear, t-shirts, shorts, and sweatshirts (Exhibit A, item 2). This registration combines both of the terms at issue — HOOKED and LIFE — in a fishing-themed slogan for goods legally identical to those in the cited registration, yet it coexists on the register with Reg. No. 5281117.
• Reg. No. 4130492 — HOOKED ON GOD HOG LIFE 7 — for clothing including shirts, t-shirts, sweaters, and sweatshirts (Exhibit A, item 1). This registration likewise combines HOOKED and LIFE for overlapping Class 25 goods.
• Reg. No. 4068123 — HOOKED UP — for "hats and shirts, all specifically designed for fishing enthusiasts" (Exhibit A, item 12), demonstrating that HOOKED-formative marks are registered even in the specific fishing-apparel niche in which applicant's identified goods (fishing shirts, neck gaiters, bucket hats) reside.

The remaining Exhibit A entries — including HOOKED PIRATE (Reg. No. 6962973), HOOKED ON THE WATER (Reg. No. 7409046), LIVIN' HOOKED (Reg. No. 6925602), HOOKED ON FLY OUTFITTERS (Reg. No. 7519643), and I'M HOOKED 906 (Reg. No. 7534568) — confirm the breadth of the crowd: hats, shirts, sweatshirts, and neck gaiters are sold under HOOKED-formative marks by at least a dozen different registrants. The register thus reflects precisely the circumstance addressed in Juice Generation and Jack Wolfskin: the field is crowded, the shared wording is weak for clothing, and each mark in the field — including the cited registration — is confined to a correspondingly narrow band of protection. Notably, the USPTO has permitted marks as close to the cited registration as HOOKED alone and CAST A LOT HOOKED ON LIFE to coexist on the register for identical Class 25 goods. Consumers accustomed to this crowded field distinguish among these marks based on their differences, however slight the Office might consider those differences in an uncrowded field.

B. Viewed against this crowded field, the marks convey distinct overall commercial impressions.

Marks must be compared in their entireties for appearance, sound, connotation, and commercial impression. Palm Bay, 396 F.3d at 1371-72; TMEP §1207.01(b). The cited mark is not a standard character mark. Per the description of record, it "consists of a distressed 'HOOKED FOR LIFE' in stylized font on top of a globe of the earth." The globe of the earth is a prominent, integral visual element that projects a global or worldwide theme and materially shapes the mark's commercial impression. Applicant's mark, by contrast, is presented in the context of its identified goods — fishing shirts, neck gaiters, bucket hats, and related apparel — where HOOKED FOR LIFE conveys the angler's double entendre: a fish taking the hook, and a lifelong devotion to fishing. Exhibit A confirms this is a recognized semantic field on the register (CAST A LOT HOOKED ON LIFE; HOOKED ON THE WATER; HOOKED ON FLY OUTFITTERS; HOOKED UP for fishing-enthusiast apparel).

Applicant acknowledges the principle, cited in the Office Action, that the word portion of a composite mark is often accorded greater weight. In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012). But that principle is not a per se rule, and it carries less force where — as the Federal Circuit held in Jack Wolfskin and Juice Generation — the literal element is demonstrably weak for the goods. In that circumstance, the design element of the cited mark and the differing connotations of the marks in their respective contexts are exactly the features consumers use to distinguish source, and the refusal cannot rest on the shared weak wording alone. Jack Wolfskin, 797 F.3d at 1373-74 (reversing a Section 2(d) finding where extensive third-party registration evidence showed the shared element was weak and consumers would look to other elements); Juice Generation, 794 F.3d at 1338-40.

C. The overlap in the identifications does not compel a finding of likely confusion.

Even accepting that the identifications overlap as to certain goods, the test remains whether confusion is likely, not merely possible, and the weakness of the shared wording narrows the scope of protection the cited registration can command even against similar marks on similar goods. Juice Generation, 794 F.3d at 1338-39; TMEP §1207.01(d)(iii). [APPLICANT TO CONFIRM: whether applicant is aware of any instance of actual confusion since applicant's first use of the mark, and the date such use began; if the marks have coexisted in the marketplace without confusion, applicant will supplement this response accordingly under the eighth DuPont factor.]

For the foregoing reasons, the cited registration is entitled to only a narrow scope of protection that does not extend to applicant's mark as actually presented and used in its fishing-apparel context. Applicant respectfully requests that the Section 2(d) refusal as to International Class 25 be withdrawn.

Amendment to the Identification of Goods/Services

In response to the requirement to amend the identification of goods and services, applicant adopts the identification suggested by the examining attorney in the Office Action. The examining attorney stated that this partial requirement applies to International Class 41 only, and further required deletion of the wording "YouTube" from the identification of services because that wording is a registered mark not owned by applicant (U.S. Registration No. 3525802). TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).

Applicant amends the identification of goods/services to read as follows:

• International Class 025: Hats; Bucket hats; Shirts; Fishing shirts; Athletic shirts; Sweatshirts; Sports shirts; Neck gaiters
• International Class 028: Fishing tackle; Fishing equipment, namely, fishing lure retriever; Fishing tackle boxes; Fishing reels; Fishing lines
• International Class 035: Affiliate marketing; Advertising, promotion, and marketing services in the nature of promoting the goods and services of others via social media and online platforms for online viewers and subscribers; Advertising, marketing and promotion services
• International Class 041: Providing online videos, not downloadable, in the field of Entertainment services, namely, providing non-downloadable videos and multimedia content in the field of fishing, outdoor adventure, and gear reviews via online video platforms, social media platforms, and a website; On-line video journals, namely, vlogs featuring non-downloadable videos in the field of Entertainment services, namely, providing non-downloadable videos and multimedia content in the field of fishing, outdoor adventure, and gear reviews via online video platforms, social media platforms, and a website; Providing on-line videos featuring Entertainment services, namely, providing non-downloadable videos, vlogs, and multimedia content in the field of fishing, outdoor adventure, and gear reviews via online video platforms, social media platforms, and a website, not downloadable; Providing online, non-downloadable, short-form videos in the field of Entertainment services, namely, providing non-downloadable videos and multimedia content in the field of fishing, outdoor adventure, and gear reviews via online video platforms, social media platforms, and a website

[APPLICANT TO CONFIRM: The Office Action presents the suggested Class 41 wording with the examining attorney's clarifying language inserted in bold font into the clauses of the original identification, and states that the bold font "may indicate deletion of some or all of the indefinite or overly broad wording." The amendment above adopts the suggested identification exactly as printed in the Office Action. If the examining attorney intended the bolded clarification to replace the introductory wording of each clause in its entirety, the streamlined Class 41 entry would read: "Entertainment services, namely, providing non-downloadable videos, vlogs, and multimedia content in the field of fishing, outdoor adventure, and gear reviews via online video platforms, social media platforms, and a website." Confirm with the examining attorney which form should be entered in the TEAS response before filing.]

The amended identification deletes the wording "YouTube" from the Class 41 identification of services and replaces it with the generic wording "online video platforms," consistent with the examining attorney's requirement and TMEP §1402.09. No proprietary or potentially proprietary wording remains in the identification.

The amendment clarifies and narrows the identification and does not broaden or expand the goods and services beyond those in the original application. See 37 C.F.R. §2.71(a); TMEP §§1402.01, 1402.06. The identifications for International Classes 25, 28, and 35 are restated above without change, consistent with the examining attorney's statement that this partial requirement applies to Class 41 only; applicant does not amend those classes by this response.

Because applicant has adopted the examining attorney's suggested identification, the identification of goods and services is now specific, definite, clear, accurate, and concise as required by 37 C.F.R. §2.32(a)(6) and TMEP §§1402.01 and 1402.03. Applicant respectfully submits that this requirement is satisfied and requests that it be withdrawn.

Exhibit A — Third-Party Registrations

Live third-party registrations from the USPTO register sharing the term at issue for related goods/services:

Conclusion

For the foregoing reasons, applicant respectfully requests that the refusal(s) be withdrawn, the requirement(s) be deemed satisfied, and the application be approved for publication.

Respectfully submitted, [ATTORNEY NAME] [FIRM] [DATE] Attorney for Applicant