UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 76700419
MARK: PEEK-A-BOO BABY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: Toot Sweet Toys, Inc
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on August 24, 2010.
The applicant has (1) argued against the refusals based on Section 2(d), (2) submitted an amended identification of goods, and (3) submitted a disclaimer of “BABY.” The Applicant did not respond to the requirement for a standard character claim. The disclaimer is acceptable. The examining attorney has withdrawn the Section 2(d) refusal for Registration No. 2978106. The prior pending application has been abandoned and is no longer a potential bar to registration.
The 2(d) refusal for likelihood of confusion with Registration No. 2821276, the requirement for an acceptable identification of goods, and the requirement for a standard character claim are maintained and made FINAL.
Refusal Based on Likelihood of Confusion
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No 2821276. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
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 similarity of trade channels of the goods. 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.
Similarity of Marks
In the present case, the applicant’s mark is PEEK-A-BOO BABY and the registrant’s mark is PEEK-A-BOO PILLOWS. The marks are similar because they share the term “PEEK-A-BOO.” The applicant’s mark also contains the descriptive word “baby” and the registrant’s mark contains the generic word “pillows,” but these elements do not distinguish the marks sufficiently to avoid the likelihood of confusion.
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Similarity of Goods
The applicant’s goods include “pillows, bedding, namely, bed blankets, pillow covers, bed sheets, duvets, crib bumpers” and the registrant’s goods are “pillows with cavities which have stuffed animals, toys or dolls stuffed inside the cavity; The cavities are covered with flaps or doors which open and close for peekaboo fun time.” The goods are identical inasmuch as the applicant’s identification of goods encompasses goods identical to those of the registrant. The word “pillows” in the applicant’s identification of goods encompasses the pillows offered by the registrant.
Conclusion
For the foregoing reasons, the refusal to register under Section 2(d) of the Trademark Act is maintained and made FINAL.
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq., (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Identification of Goods
The identification of goods in International Class 16 is acceptable.
The amended wording in the identification of goods in International Class 24 must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. Specifically, the examining attorney informed the applicant in the Office action of February 25, 2010 that “pillows” are classified in International Class 20 and the other bedding items are classified in International Class 24. The amended identification of goods submitted by the applicant contains pillows in Class 24 with the other goods.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Applicant may adopt the following identification of goods, if accurate:
International Class 16: Children’s books; and/or
International Class 20: Pillows; and/or
International Class 24: Bedding, namely, bed blankets, pillow covers, bed sheets, duvets, crib bumpers
See TMEP §1402.01.
Multiple-Class Application
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
Standard Character Claim
In the Office action of February 25, 2010, the examining attorney required that the applicant submit a standard character claim. The applicant did not respond to this requirement.
Options for Responding to Final Office Action
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Michael J. Souders/
Trademark Examining Attorney
Law Office 115
(571) 272-9483
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.