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.
Search Results
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. 3406239. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
General Principles Governing Likelihood of Confusion Determinations
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.
Regarding the issue of likelihood of confusion, all circumstances surrounding the
sale of the goods and/or services are considered. These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of
similarity between the marks and between the goods and/or services. See Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A.
1973); TMEP §1207.01. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning 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). In comparing the goods and/or services, it is necessary to show that they are related in some manner. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(vi).
The overriding concern is not only to prevent buyer confusion
as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion
determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Comparison of 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 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.2d 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).
Applicant has applied to register the mark ELOQUENCE for use with “residential furniture, residential lighting,
residential furniture accessories and the services of providing reselling of various residential furniture and furniture accessories.”
Applicant’s proposed mark ELOQUENCE is identical in sound, appearance, meaning and overall commercial impression to
the registered mark ELOQUENCE.
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).
If the marks of the respective parties
are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist
between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70,
78 (TTAB 1981); TMEP §1207.01(a).
Applicant will use the mark with “residential furniture, residential lighting, residential furniture accessories
and the services of providing reselling of various residential furniture and furniture accessories.” The registrant is using the mark with office furniture, namely
seating.
The goods of the respective parties are related because both include furniture.
Applicant’s goods include residential furniture, and therefore include office furniture for the home office. It is common for residential furniture and office
furniture to emanate from a single source. See attached examples of office and residential furniture offered together under the same mark..
Further, although it is not entirely clear what applicant’s services are, service
that consist of selling furniture would also be related to the registrant’s furniture goods.
Consumers are
likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii);
see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be
confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty
aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and
women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE
(stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219
USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause
confusion).
The class of consumers and channels of trade are the same. The class of purchaser
is the general public and the channels of trade are therefore the same.
The marks are identical and the goods are closely related. Therefore, a likelihood
of confusion exists.
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.
Requirements
The wording “residential lighting, residential
furniture accessories and the services of providing reselling of various residential furniture and furniture accessories” in the identification of goods and services is indefinite and overly broad
and must be clarified as follows. See TMEP §1402.01.
The current wording includes goods and services in a number of International
Classes.
The wording “residential lighting” is indefinite because the identity of the goods is not clear. Applicant may amend this wording, if accurate to “residential lighting, namely electric lamps”.
The wording “residential furniture accessories” is indefinite because the term “accessories” is
indefinite. Applicant must specifically identify the accessories by common commercial name. Applicant may amend this wording, if
accurate to “residential furniture accessories, namely (here insert the commercial namely of the goods e.g. pillows”.
The wording “and the services of providing reselling of various residential furniture and furniture accessories” is
indefinite because the identity of the services is not clear. Applicant may amend this wording, if accurate to “and online retail stores services featuring
residential furniture and furniture accessories, namely (here further describe “furniture accessories” – it is not clear what of what this category of goods includes).
Identifications of goods/services can
be amended only to clarify or limit the goods/services; adding to or broadening the scope of the goods/services 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/services that are not
within the scope of the goods/services set forth in the present identification.
Multiple Class Application
The application identifies
goods and/or services that are classified in at least 4 classes; however, the fees submitted are sufficient for only 1 class(es). In a multiple-class application, a
fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
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).
If applicant prosecutes
this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under
Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee
information should be confirmed at http://www.uspto.gov); and
(3) For each additional international class of goods and/or services, applicant must submit:
a. Dates of first use of
the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in
commerce, must be at least as early as the filing date of the application;
b. One specimen showing use
of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a
single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same
specimen;
c. A statement that “the
specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;”
and
d. Verification of the
statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. Verification is not required
where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added
class(es).
See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01,
1403.02(c).
The specimen(s) of record is not acceptable for International Class
20.
Applicant should feel free to contact the examining attorney with any questions concerning this office
action.
/bluken/
Bonnie Luken
Trademark Examining Attorney
Law Office 107
Phone (571)272 8807
Fax (571)273 9107
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.