UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88056357
MARK: RED ROVER
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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: Little Unicorn, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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NON-FINAL 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/12/2019
This Office action is in response to applicant’s communication filed on March 25, 2019.
1. Advisory – Requirement Satisfied:
The trademark examining attorney notes that the following requirement has been satisfied: (1) Identification of Goods Requirement. See TMEP §§713.02, 714.04.
In the November 14, 2018, US Application Serial Number 87673421 was cited as a potential Section 2(d) Refusal to Register. The prior pending application has since registered. Accordingly, registration is now refused as discussed below.
2. Refusal – Section 2(d) Refusal to Register – Likelihood of Confusion:
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks:
In the present case, applicant’s mark is RED ROVER and registrant’s mark is RED ROVER. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods:
The applicant’s goods are, “Skin soap, bath soap, bar soap, shampoo, and hair conditioner”, “Diaper bags and bags for carrying baby accessories”, “Children's bed sheets, pillow cases, and blankets; bath, beach, face, hand, terry, and hooded towels; towels for babies, toddlers, and children; washcloths” and “Clothing for babies, toddlers, and children in the nature of pajamas, jackets, sweatshirts, shirts, pants, jumpers, shoes, and hats.”
The registrant’s goods are, “Feeding utensils and accessories, namely, spoons and forks for children” and “Feeding utensils and accessories, namely, cups for children, bowls and plates for children; placemats, namely, placemats made of steel and placemats made of silicone; lunch kits comprised of lunch boxes and insulated containers for food or beverages.”
The applicant’s goods are related to the registrant’s goods because these types of goods travel through the same channels of trade to the same classes of purchasers. The attached Internet evidence, consisting of children’s stores’ websites, establishes that the same entity commonly manufactures/produces/provides the relevant goods and/or services and markets the goods and/or services under the same mark. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, because the marks are identical and the evidence demonstrates that the goods are closely related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.
The applicant argues, “The Applicant’s Mark and the Fox Run Holdings Marks are dissimilar in appearance.” Applicant further argues, “In this instance, while both marks use the words ‘Red Rover’, Fox Run Holdings has chosen to present its mark in this stylized manner…This stylized version of the mark can be seen on Fox Run Holdings’ specimen submitted December 11, 2018 and on their website…Applicant’s ‘red rover’ clothing line will use an entirely different logo.” This argument, however, is not persuasive. Specifically, the registrant has registered the mark RED ROVER in standard characters, and therefore can use that mark in any font or stylization. Registrant is not limited to use the mark the way it was used on the specimen, or on their website as the registration is in standard characters. The applicant has also applied for the mark RED ROVER in standard characters. Accordingly, the marks are identical. Because the marks are identical and the evidence demonstrates that the goods are closely related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.
The applicant argues, “The trade channels of the Applicant and the trade channels of the Fox Run Holdings Mark are materially different”. Applicant further argues, “In this instance, although both marks are marketed to parents, the marks are used for significantly different products. Fox Run Holdings sells plates and utensils. Currently, Fox Fun Holdings’ products are only available on Fox Run Holdings’ websites. However, in future, Fox Fun Holdings’ products may be sold in grocery stores or other places where plates and utensils are sold. Conversely, Applicant will use the Applied-for Mark for a line of children’s clothing. Applicant’s clothing line will be sold at clothing stores. Because these products are so different, they are advertised differently in different trade channels.” This argument, however, is not persuasive. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Further, the attached evidence demonstrates that goods similar to those of the applicant and goods similar to those of the registrant travel through the same channels of trade to the same classes of purchasers. Accordingly, because the marks are identical and the evidence demonstrates that the goods are closely related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.
The applicant argues that the purchasers are sophisticated. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Accordingly, because the marks are identical and the evidence demonstrates that the goods are closely related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.
3. Advisory – TEAS RF Applicants:
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
4. Advisory – Assistance:
PLEASE NOTE: If applicant requires assistance navigating the online response form, applicant should contact the Trademark Assistance Center at 1-800-786-9199.
/Colleen Dombrow/
Trademark Attorney
Law Office 101
Direct Dial: 571-272-8262
Facsimile: 571-273-9101
colleen.dombrow@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.