Offc Action Outgoing

This letter is in response to applicant’s communication filed July 23, 2009. The requirement for acceptable identification of goods is satisfied and is now withdrawn. The likelihood of confusion refusal is maintained and continued. The Office regrets any inconvenience caused as a result of not raising the issue below previously.

DESCRIPTION OF THE MARK

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.

Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:

The mark consists of the stylized words “LIVE LAUGH LOVE” separated by two recycling symbols, with a shaded background.

LIKELIHOOD OF CONFUSION REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3385179, 3484806, 3495341, 3498959, and 3498963. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Registrations were previously enclosed.

While the applicant seeks to register the mark LIVE LAUGH LOVE with a design for “general purpose plastic bags; paper bags; non-woven bags, namely, plastic shopping bags; plastic bags for packaging,” “tote bags, canvas shopping bags,” “polypropylene bags used for the storage of clothes and shoes; jute bags,” the registered marks are used as follows.

The cited registrations, all owned by the same registrant are used as follows:

3385179 LIVE LAUGH LOVE for “beach bags”

3484806 LIVE LAUGH LOVE LIFE for “calendars; loose leaf binders; notepads; stickers; holiday cards”

3495341 LIVE LAUGH LOVE for “on-line retail store services featuring general merchandise and general consumer goods”

3498959 LIVE LAUGH LOVE for “computerized on-line ordering featuring general merchandise and general consumer goods”

3498963 LIVELAUGHLOVE.COM for “computerized on-line ordering featuring general merchandise and general consumer goods”

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

COMPARISON OF THE MARKS

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

The dominant portion of the applicant mark and the registrant’s marks is the wording “LIVE LAUGH LOVE.” Overall, the marks have the same commercial impression.

COMPARISON OF THE GOODS AND SERVICES

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

The applicant’s goods, namely, “general purpose plastic bags; paper bags; non-woven bags, namely, plastic shopping bags; plastic bags for packaging,” “tote bags, canvas shopping bags,” “polypropylene bags used for the storage of clothes and shoes; jute bags,” are related to the registrant’s goods and services, namely, “beach bags,” “calendars; loose leaf binders; notepads; stickers; holiday cards,” “on-line retail store services featuring general merchandise and general consumer goods,” and “computerized on-line ordering featuring general merchandise and general consumer goods” because these goods and services are the type of goods and services that are likely to travel in the same channels of trade. Accordingly, the goods and services would be available to the same class of purchasers and would be encountered under circumstances leading one to mistakenly believe that they originate from the same source. The attached Internet website evidence shows that the parties’ goods and services travel through the same channels of trade.

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely, calendars, bags, cards, shopping bags and retail store services featuring general merchandise, are of a kind that may emanate from a single source. 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).

The fact that the goods or services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods or services, but likelihood of confusion as to the source of those goods or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01.

Since the marks are similar and the goods/services are related, there is a likelihood of confusion as to the source of applicant’s goods/services. Therefore, applicant’s mark is not entitled to registration

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 105

(571) 272-9292

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

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