UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/658163
MARK: PEEPS
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Just Born, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 3/10/2010
THIS IS A FINAL ACTION.
Application Removed from Suspension
On August 17, 2009, action on this application was suspended pending the disposition of Application Serial No. 76692743. The referenced pending application has abandoned and is no longer a bar to the registration of applicant’s mark. 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. 0546396. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a). In addition, the requirements for an acceptable identification of goods and a claim of ownership of prior registrations are now made FINAL. See37 C.F.R. §2.64(a).
Likelihood of Confusion
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.
Facts
Applicant proposes PEEPS for use in connection with toys, namely, plush toys in the shape of a bunny, plush toys in the shape of a chick, bath toys in the shape of a chick, wind up toys in the shape of a chick, toy stamps in the shape of a chick, play figures in the form of sponges in the shape of a chick, flying discs, jump ropes, gift baskets containing toys, egg decorating kits, hobby craft kits, toy cookware. Registrant provides dolls in connection with the mark MISS PEEP.
Applicant has merely deleted a term from the registered mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Applicant argued in its response that “MISS PEEP conveys a human, perhaps with sophistication, while PEEPS would convey an association with the famous candy.” The examining attorney submits that whatever meaning consumers encountering the marks may ascribe to the term PEEP or PEEPS, they will ascribe the same meaning to PEEP in the registered mark as they will to applicant’s mark. Accordingly, because of the common term PEEP in the marks, the marks create the same overall commercial impression.
Applicant and registrant’s goods are all toy items. They are therefore sold through the same channels of trade, namely, toy stores, to the same consumers, namely, children.
Also attached are website excerpts showing goods of the type provided by applicant and registrant being sold together.
Accordingly, because confusion as to source is likely, registration is refused under Section 2(d) of the Trademark Act. This refusal is maintained and made FINAL.
Identification of Goods
Identifications can be amended only to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. Id.; see TMEP §§1402.06 et seq., 1402.07(a). Therefore, this wording should be deleted from the identification.
Applicant may adopt the following identification, if accurate:
Toys, namely, plush toys in the shape of a bunny, plush toys in the shape of a chick, bath toys in the shape of a chick, wind up toys in
the shape of a chick, toy stamps in the shape of a chick, play figures in the form of sponges in the shape of a chick, flying discs, jump ropes, gift baskets containing plush toys, egg decorating kits, hobby craft kits, toy cookware. International Class 28.
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.
This requirement is maintained and made FINAL.
Claim of Ownership of Prior Registrations
If applicant is the owner of U.S. Registration Nos. 1219337 and 2229060, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. See the attached. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 1219337 and 2229060.
This requirement is maintained and made FINAL.
Required Response to Final Action
If applicant does not respond within six months of the date of issuance 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).
Sara N. Benjamin
/Sara N. Benjamin/
Examining Attorney
Law Office 110
571.272.8847
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.