UNITED STATES PATENT AND TRADEMARK OFFICE
OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE:
The referenced
application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
U.S. Registration No. 1898894. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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
Applicant’s mark BABY BLUE and design is for the goods, “tuxedos, dresses, baby wear.”
Registrant’s mark BABY BLUES is for the goods, “clothing; namely, dresses, jumpers, shorts, pants, shirts, sweatshirts, and maternity blouses.”
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 applicant’s and the registrant’s marks are highly similar. Applicant has merely deleted the letter “s” from registrant’s mark. Trademarks and/or service marks consisting of the singular and
plural forms of the same term are essentially the same mark. Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding
no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985)
(noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962)
(finding no material difference between the singular and plural forms of RED DEVIL).
The fact that applicant has added a design element does not diminish the similarity of the marks.
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).
COMPARISON OF THE GOODS/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).
Applicant’s goods and registrant’s goods contain identical items, namely dresses. Please see the identification of goods.
Therefore, the mark is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
IDENTIFICATION OF GOODS
The wording “baby wear” in the identification of goods is indefinite and must be clarified because it is
too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. Applicant may substitute the
following wording, if accurate: tuxedos, dresses, baby wear, namely, _____________[indicate specific items, e.g., shirts, pants, jackets, etc.];
in Class 25.
Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening
the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
/Anne Gustason/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 117
(571) 272-9722
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.