UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79171874
MARK: STREAM
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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: Alape GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1263418
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL #1 – LIGHTING APPARATUS
With respect to “lighting apparatus, in particular wall lights and kitchen and bathroom lamps” in International Class 11 only, Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1135694, 2185250, 4452875, 4548906, 4704700, and 4808377. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
A) COMPARISON OF THE MARKS
Applicant’s mark is “STREAM.” Cited registrants’ marks are “LYTESTREAM,” “ARCSTREAM,” “QUICK STREAM,” “WAVSTREAM,” “WAVESTREAM LED,” and “STREAMLINE.” The marks are similar because they all contain “STREAM,” which is applicant’s mark as a whole.
Although the cited registrations contains additional terms that distinguish themselves form one another, applicant’ mark contains no such additional wording. The mere deletion of wording from registered marks may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); 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 the registered marks, and there is no other wording to distinguish it from the registered marks.
Because the marks all contain “STREAM,” which is applicant’s mark as a whole, and because there is no additional wording in applicant’s mark to distinguish itself from the cited marks, the marks are sufficiently similar to support a finding of likelihood of confusion.
B) COMPARISON OF THE GOODS
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] 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)); TMEP §1207.01(a)(i).
Applicant’s refused goods are “lighting apparatus, in particular wall lights and kitchen and bathroom lamps.” Cited registrants’ goods are “electric lighting equipment-namely, surface mounted lighting fixtures,” “electric light bulbs,” “apparatus for lighting, namely, lanterns for lighting and electric lamps,” “security lights for outdoor use,” “lighting fixtures with motion detection; led (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; led lighting fixtures for indoor and outdoor lighting applications; lighting fixtures that integrate natural daylight and fluorescent lighting into the fixture; electrical lighting fixtures,” and “led (light emitting diode) lighting fixtures; led (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications.” The goods are closely related because they are all lighting apparatus.
Although the cited registrations do not explicitly mention wall lights and kitchen and bathroom lamps, with respect to applicant’s and registrants’ goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Absent restrictions in a 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).
In this case, the identifications set forth in the registrations use wording to describe the goods that is presumed to encompass all goods of the type described, including those in applicant’s more narrow identification. Specifically, “surface mounted lighting fixtures,” “residential lighting applications; led lighting fixtures for indoor… lighting applications” and so on can include lighting for walls, kitchens, and bathrooms. Thus, the goods are presumed to overlap.
Because the marks are similar and the goods are related, a likelihood of confusion exists to prevent registration of applicant’s mark under Section 2(d) of the Trademark Act for “lighting apparatus, in particular wall lights and kitchen and bathroom lamps” in International Class 11.
LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL #2
And with respect to “apparatus for steam generating and sanitary purposes, namely wash basins and sinks, fitted basins, free-standing washing columns, shower trays” in International Class 11, as well as all of International Class 20 only, registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4006831 and 4073721. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
A) COMPARISON OF THE MARKS
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).
Applicant’s mark is “STREAM.” Cited registrants’ marks are “STREAMLINE” and “CORREGO.” With respect to U.S. Registration No. 4006831, the marks are similar because they both contain “STREAM,” which is applicant’s mark as a whole. With respect to U.S. Registartion No. 4073721, the marks are similar because they are foreign equivalents.
Marks may be confusingly similar in appearance where similar terms or parts of terms appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983); TMEP §1207.01(b)(ii)-(iii).
Although the cited registration contains the additional term “LINE,” the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); 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 the registered mark, and there is no other wording to distinguish it from the registered mark.
The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).
Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording. See In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”); In re Hub Distrib., Inc., 218 USPQ at 284 (holding the Spanish wording EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where it was determined that EL SOL was the “direct foreign language equivalent” of the term SUN).
In the present case, “CORREGO” is the Portuguese word for “STREAM” in English. See attached evidence from WordReference.com. According to the U.S. Census Bureau, 673,566 people ages 5 or older who spoke Portuguese at home in 2011, representing an increase of nearly 125,000 speakers between 2000 and 2010. See attached evidence from HeraldNews.com. Thus, a significant number of consumers in the United States would consider “CORREGO” and “STREAM” to be foreign equivalents.
Because the marks share “STREAM,” or are the foreign equivalent of “STREAM,” which is applicant’s mark as a whole, the marks are sufficiently similar to support a finding of likelihood of confusion.
B) COMPARISON OF THE GOODS
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] 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)); TMEP §1207.01(a)(i).
Applicant’s refused goods are “apparatus for steam generating and sanitary purposes, namely wash basins and sinks, fitted basins, free-standing washing columns, shower trays” and “washstands, wash station equipment consisting mainly of wash stands and mirrors and lighting devices being unit parts, mirrors (silvered glass), mirror frames, furniture frames.” Cited registrants’ goods are “surgical scrub sink(s),” “plumbing fixtures, namely, faucets, shower heads, toilets, bidets, bathtubs, whirlpool baths, sinks, water closets, and lavatories,” and “furniture, bathroom furniture, kitchen cabinets, bathroom vanities, mirrors for furniture, bathroom shelves, non-metal clothes hooks, bathtub grab bars not made of metal, shower grab bars not of metal.”
The goods are related because they are sanitary devices for cleaning, or are washing furniture goods primarily used in a bathroom or cleaning room setting.
Specifically, the term “SINK” means “a wide bowl that has a faucet for water and a drain at the bottom and is usually positioned in a counter or on a pedestal,” and the term “BASIN” means “an open usually circular vessel with sloping or curving sides used typically for holding water for washing.” See attached dictionary evidence. Thus, sinks and basins are both goods used for holding water for washing, and are thus very closely related.
Moreover, with respect to applicant’s and registrants’ goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Absent restrictions in a 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).
In this case, the identification set forth in one of the registrations uses wording to describe the goods that is presumed to encompass all goods of the type described, including those in applicant’s more narrow identification. Specifically, “furniture, bathroom furniture,” can include all of the goods listed in applicant’s International Class 20 identification. Thus, the goods are presumed to overlap.
Because the marks are similar and the goods are related, a likelihood of confusion exists to prevent registration of applicant’s mark under Section 2(d) of the Trademark Act for “apparatus for steam generating and sanitary purposes, namely wash basins and sinks, fitted basins, free-standing washing columns, shower trays” in International Class 11, as well as all of International Class 20.
RESPONDING TO PARTIAL REFUSALS
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods 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).
Applicant must also respond to the requirement set forth below:
IDENTIFICATION OF GOODS
The identification of goods contains parentheses. Generally, parentheses should not be used in identifications. TMEP §1402.12. The USPTO generally uses brackets to indicate goods that have been deleted from registrations. See id. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant may adopt the following identification of goods, if accurate:
International Class 11 – “Apparatus for steam generating and sanitary purposes, namely wash basins and sinks, fitted basins, free-standing washing columns in the nature of sinks, shower trays, and wall water fountains, shower trays; lighting apparatus, namely, wall lights and kitchen and bathroom lamps.”
International Class 20 – “Washstands, wash station equipment consisting mainly of wash stands and mirrors and lighting devices being unit parts, mirrors, mirror frames, furniture frames.”
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
Examining Attorney
Law Office 104
Phone - (571) 272-8856
Fax - (571) 273-8856
jason.blair@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.