To: | J&J Flooring Group, LLC (trademark@gardnergroff.com) |
Subject: | U.S. Trademark Application Serial No. 88163980 - DIGITAL CANVAS - 2E14.3-930 |
Sent: | May 22, 2020 12:02:32 PM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88163980
Mark: DIGITAL CANVAS
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Correspondence Address: GARDNER GROFF GREENWALD & VILLANUEVA, PC 2018 POWERS FERRY ROAD, STE 800
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Applicant: J&J Flooring Group, LLC
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Reference/Docket No. 2E14.3-930
Correspondence Email Address: |
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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: May 22, 2020
On May 30, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87645158. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Similarity of the Marks
The applicant’s mark is DIGITAL CANVAS & design. The registrant’s mark is CANVAS.
The applicant’s mark is similar to the registrant’s mark because both contain the term CANVAS. The addition of the term DIGITAL and the design element to the applicant’s mark does not change the commercial impression of the marks.
Relatedness of the Services
The applicant’s services are:
“Providing online non-downloadable software for visualizing flooring; providing online non-downloadable software for selecting and arranging elements of a room, namely, flooring; providing online non-downloadable software for uploading a photo and selecting flooring; providing a website featuring use of non-downloadable software for visualizing flooring; providing a website featuring use of non-downloadable software for selecting and arranging elements of a room, namely, flooring; providing a website featuring use of non-downloadable software for uploading a photo and selecting flooring.”
The registrant’s services are:
“providing non-downloadable software for designing and implementing carpet patterns using dye injection technology.”
The applicant’s services are related to the registrant’s services because both consist of the provision of software for design floor coverings.
In this case, the application uses broad wording to describe non-downloadable software for visualizing and arranging flooring, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow non-downloadable software for designing and implementing carpet patterns. 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 services 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 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)). Thus, applicant’s and registrant’s goods and/or services are related.
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Robert J. Struck/
Robert J. Struck
Trademark Examining Attorney
Law Office 109
Robert.Struck@uspto.gov
571-272-1513
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDANCE