Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  February 21, 2020

 

INTRODUCTION

 

On June 26, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 86786647.  The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.

 

Upon further consideration of the Office’s database of registered and pending marks as well as the Section 2(d) likelihood of confusion full refusal that way issued, the examining attorney is WITHDRAWING the refusal as to U.S. Registration Nos. 3922930 and 4871295 in their entireties.  Additionally, the refusal with respect to U.S. Registration Nos. 1837700 and 2818786 is limited only to “vanity sets in the nature of decorative trays, hair combs and hair brushes” in Class 21.  And as for U.S. Registration No. 5292190, the refusal is restricted only to “pouf ottomans” in Class 20.  Lastly, given the strength of the wording BASS in Class 24, a new Section 2(d) refusal must issue but only as to that class.  This constitutes a NEW ISSUE, and the remaining refusal is MAINTAINED AND CONTINUED. 

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Section 2(d) Partial Refusal – Likelihood of Confusion – NEW ISSUE IN PART AND MAINTAINED AND CONTINUED IN PART; and
• Identification of Goods Amendment Required – MAINTAINED AND CONTINUED.

 

Also contained herein is a partial abandonment advisory.

 

SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION –

NEW ISSUE IN PART AND MAINTAINED AND CONTINUED IN PART

 

For the reasons stated and evidence provided in the initial Office action, which are incorporated herein by reference, U.S. Registration Nos. 1837700 and 2818786 pose a bar to registration of the applicant’s “vanity sets in the nature of decorative trays, hair combs and hair brushes” in Class 21, and U.S. Registration No. 5292190 poses a bar to registration of the applicant’s “pouf outtomans” in Class 20. 

 

Registration of the applicant’s mark also is partially refused only as to Class 24 because of a likelihood of confusion with the mark in U.S. Registration Nos. 3161393.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Here, the applicant’s mark is BASS for, among other things, “Bed spreads, bed blankets, comforters, duvet covers, down duvets, down alternative duvets, pillowcases, quilts, shams, bed sheets, mattress comfort pads, window curtain panels, tiered kitchen window curtains, kitchen linens, table linens, tablecloths not of paper, table napkins of textile, table place mats of textile, tea towels, dish towels for drying, fabric window tiers, shower curtains, bath towels, hand towels, wash towels, face cloths,” and the registrant’s mark is BASS UNLIMITED BACK A GREAT FIGHTER for “fabrics, namely towels.”

 

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 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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.  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 and differences in the marks.”); TMEP §1207.01. 

 

In this case, the following factors are the most relevant: similarity of the marks, encompassing goods in part, and similarity of the producers and trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Here, the applicant’s standard character mark BASS is confusingly similar to the registrant’s design mark BASS UNLIMITED BACK A GREAT FIGHTER.

 

Specifically, the parties’ marks begin with the same distinctive wording BASS, which is identical in appearance, sound, commercial impression, and meaning, namely, evoking a fish.  http://www.ahdictionary.com/word/search.html?q=bass.  Consumers are generally more inclined to focus on the first word in any trademark.  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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Because BASS is the first wording in the marks, consumers will focus on this wording for source identification, thereby making it the dominant feature of the marks.

 

Though the registrant’s mark includes the wording UNLIMITED BACK A GREAT FIGHTER, this addition, too, does not obviate the similarities between the marks because applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Lastly, though the registrant’s mark includes a bass design, this addition, as well, does not obviate the similarities between the marks because it merely echoes the wording BASS and, thus, does not change the commercial impression or meaning of the mark.  Additionally, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Therefore, this design is less significant in terms of affecting the mark’s commercial impression, and the wording BASS remains the dominant element of the mark.

 

Accordingly, the marks are confusingly similar.

 

Relatedness of the Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Here, the applicant’s “Bed spreads, bed blankets, comforters, duvet covers, down duvets, down alternative duvets, pillowcases, quilts, shams, bed sheets, mattress comfort pads, window curtain panels, tiered kitchen window curtains, kitchen linens, table linens, tablecloths not of paper, table napkins of textile, table place mats of textile, tea towels, dish towels for drying, fabric window tiers, shower curtains, bath towels, hand towels, wash towels, face cloths” are closely related to the registrant’s “fabrics, namely towels.”

 

Specifically, determining likelihood of confusion is based on the description of the goods 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)).  

 

In this case, the registrant uses broad wording to describe “fabrics, namely towels”, which presumably encompasses all goods of the type described, including the applicant’s more narrow “tea towels, dish towels for drying, bath towels, hand towels, wash towels.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods 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)). 

 

Moreover, the attached evidence establishes that third parties routinely produce the identified goods under the same mark and sell in the same trade channels.  E.g., http://edbyellen.com/collections/quilts-blankets/products/augie-and-friends-plush-blanket and http://edbyellen.com/collections/bath/products/augie-dog-3-piece-bath-towel-set (producing and selling bed blankets and towels under ED mark); http://www.ralphlauren.com/home-bath-towels/bowery-cotton-towels-and-mat/402952.html?dwvar402952_colorname=Sky%20Blue&webcat=search#lang=en_US&q=towel&start=1 and http://www.ralphlauren.com/home-bedding-duvets-comforters/palmer-duvet-cover/167158.html?webcat=search&dwvar167158_colorname=Polo%20Navy#q=duvet&lang=en_US&simplesearch=Go&start=1 (producing and selling towels and duvet covers under Ralph Lauren mark); http://www.macys.com/shop/product/martha-stewart-collection-spa-mix-match-collection-created-for-macys?ID=4557644&CategoryID=16853 and http://www.macys.com/shop/product/martha-stewart-collection-table-linen-collection-created-for-macys?ID=5923360&CategoryID=17199 (producing and selling towels and table linens under Martha Stewart Collection mark).

 

Accordingly, the goods are closely related. 

 

Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods.  Thus, registration is partially refused pursuant to Trademark Act Section 2(d). 

 

Response to Partial Refusal

 

Applicant may respond to the stated partial refusal by submitting evidence and arguments against the partial refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods to which the partial refusal pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) 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 partial 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 partial refusal.  37 C.F.R. §2.87(e).

 

REQUIREMENT

 

If the applicant responds to the partial refusal, then the applicant also must respond to the below requirement.

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED –

MAINTAINED AND CONTINUED

 

For the reasons stated in the earlier Office action, which is incorporated herein by reference, the applicant must amend the clause “vanity sets in the nature of decorative trays, hair combs and hair brushes” to specify that the decorative trays, hair combs, and hair brushes are sold as a component part of or featured in the vanity sets to be within the scope of the original identification, which reads “vanity sets and trays”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

PARTIAL ABANDONMENT ADVISORY AND ASSISTANCE

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application: “pouf ottomans” in Class 20, “vanity sets in the nature of decorative trays, hair combs and hair brushes” in Class 21, and all of Class 24.  The application will then proceed with the following goods only: “Decorative pillows, toss pillows, floor pillows, down pillows, down alternative pillows, pet beds, interior window shades, decorative curtain rods and drapery hardware, namely, traverse rods, poles, curtain hooks, curtain rods and finials; hand-held mirrors as part of a vanity set” in Class 20, “Oven mitts, pot holders” in Class 21, and all of Class 27.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please e-mail or call the below examining attorney with questions about this Office action.

 

How to respond.  Click to file a response to this nonfinal Office action.

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 21, 2020 for

U.S. Trademark Application Serial No. 88159709

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 21, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”