UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 76716325
MARK: P.J. SANDMAN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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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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OFFICE ACTION
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.
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(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is P.J. SANDMAN for “plush dolls and plush toys” in Class 28. Registrant’s mark is P.J. SPARKLES for “dolls; doll accessories; fantasy character playsets consisting of miniature environments and associated characters, figures, and objects; fantasy character toys” also in Class 28.
Comparison of Marks
The respective marks, P.J. SANDMAN and P.J. SPARKLES, are very similar in appearance, sound and meaning because the wording “P.J.” is identical and, considered in their entireties in connection with highly related goods, the applied-for mark conveys the commercial impression of being a version of registrant’s products intended for use when going to sleep. The shared wording “P.J.” is also the most memorable element of the applied-for and registered marks because consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Moreover, where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). As indicated above, considered in their entireties in connection with highly related goods, the applied-for mark conveys the commercial impression of a version of registrant’s P.J. products intended for use at bedtime.
Comparison of the Goods
Specifically, both applicant and registrant identify toys and/or playthings. And, for example, the registered “dolls” include “plush dolls” in applicant’s more narrow identification. Furthermore, for example, the attached website evidence from Giggle, Hasbro, My Sibling Dolls and Douglas show a variety of toys, including dolls, plush toys and related accessories, provided by a single source and under the same mark. Similarly, the attached website evidence from Genius Jones show dolls and plush toys marketed via the same channels of trade, for example toy and kids’ stores, and to the same consumer, namely children. Because the applied-for and registered goods are similar in nature, overlapping and commonly encountered together in the marketplace, they are related.
The goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Conclusion
Because applicant’s mark P.J. SANDMAN is confusingly similar to registrant’s mark P.J. SPARKLES, registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
NAME OF AN INDIVIDUAL – INQUIRY
If the name or signature in the mark does not identify a particular living individual, then applicant must submit a statement that the name “P.J. SANDMAN” does not identify a living individual. TMEP §§813.01(b), 1206.05; see 37 C.F.R. §2.61(b).
If the name or signature in the mark does identify a particular living individual, then applicant must submit the following:
(1) A statement that the name “P.J. SANDMAN” identifies a living individual whose consent is of record. If the name represents that of a pseudonym, stage name, or nickname, applicant must include a statement that P.J. SANDMAN identifies the pseudonym/stage name/nickname> of <specify actual name>, a living individual whose consent is of record; and
(2) A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname, or signature as a trademark and/or service mark with the USPTO (e.g., “I consent to the use and registration by Toot Sweet Toys, Inc. of my name P.J. SANDMAN as a trademark with the USPTO”).
TMEP §§813, 813.01(a), 1206.04(a); see 37 C.F.R. §2.61(b).
Failure to respond to this inquiry is a sufficient basis for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
UNCLEAR IF STANDARD CHARACTER DRAWING INTENDED
A standard character drawing depicts a mark only in Latin characters, Roman or Arabic numerals, and common punctuation or diacritical marks, with no design element or stylization and no claim to any particular font style, size or color. 37 C.F.R. §2.52(a); TMEP §807.03(a). A special form drawing, however, is used to depict a mark with stylized lettering, color, and/or design elements. 37 C.F.R. §2.52(b); TMEP §807.04(a).
In this case, a standard character drawing would be acceptable because the wording creates a distinct commercial impression apart from any stylization or design element on the specimen. See In re wTe Corp., 87 USPQ2d 1536, 1539-40 (TTAB 2008); TMEP §807.04.
If the mark is in standard characters, applicant must submit the following statement: “The mark consists of standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a). If the mark is shown in a special form drawing format, applicant must state so and also ensure that an accurate description of the mark is included in the record. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.
RESPONSE GUIDELINES
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Evin L. Kozak/
Trademark Examining Attorney
Law Office 116
571-272-9237
evin.kozak@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.