To: | Maison Battat Inc. (ALangsam@pryorcashman.com) |
Subject: | U.S. Trademark Application Serial No. 88173087 - TULIP - 13146.00001 |
Sent: | July 11, 2019 09:56:55 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88173087
Mark: TULIP
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Correspondence Address:
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Applicant: Maison Battat Inc.
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Reference/Docket No. 13146.00001
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 11, 2019
This Office action is in response to applicant’s communication filed on 21 June 2019.
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. 4463582. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SECTION 2(d) – Refusal Made Final
On 22 December 2019, registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 4463582 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.
The examining attorney has determined that contemporaneous use of the marks TULP, with a design of tulip flower integrated therein, (for use on “Ball-jointed dolls; Ball-jointed porcelain dolls; Ball-jointed resin dolls; Ball-jointed vinyl dolls; Bean bag dolls; Bobble head dolls; Bobblehead dolls; Bodhidharma dolls with pupils undrawn (menashi-daruma); Christmas dolls; Clothes for European dolls; Clothes for Japanese traditional dolls; Doll accessories; Doll cases; Doll clothing; Doll costumes; Doll furniture; Doll house furnishings; Doll houses; Dolls; Dolls and accessories therefor; Dolls and doll accessories, namely, clothing for dolls, doll rooms, doll beds, doll houses, toy fabrics and linens for dolls and strollers for dolls; Dolls and dolls' clothing; Dolls and playsets therefor; Dolls for Christmas; Dolls for playing; Dolls in sitting posture (osuwari dolls); Dolls' clothes; Dolls' feeding bottles; Dolls' houses; Dolls' rooms; European style dolls; Furniture for doll's houses; Furniture for dolls' houses; Girls' festival dolls and their fittings; Headgear for dolls; Paper dolls; Playsets for dolls; Plush dolls; Plush dolls created from children's drawings; Porcelain dolls; Rag dolls; Shoes for dolls; Soft sculpture dolls; Talking dolls; Vinyl dolls”) and TULIP (for use on “toy animals”) would be likely to cause confusion for the following reasons.
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.
A. The Marks
The applicant's TULIP is highly similar to the registrant’s TULP mark for the following reasons.
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)); TMEP §1207.01(b).
In this instance, the design element integrated within the wording TULP immediately communicates the same commercial impression as the one communicated by the applied-for mark – a tulip. The marks are therefore essentially the same in commercial impression.
Furthermore, the applicant is advised that the fallibility of the average purchaser's memory must be considered. Given the substantial similarities in the appearance and meaning of the marks, the average purchaser is not likely to distinguish the marks based on such small differences. The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b). Furthermore, the Board has specifically addressed the issue of the fallibility of the average consumer's memory in The Barbers, Hairstyling for Men & Women, Inc. v. The Baraber Pole, Inc., 204 USPQ 403 (TTAB 1979), wherein it stated:
[P]urchasers and prospective purchasers...generally do not have the
opportunity to compare the respective marks on a side-by -side basis,
and, thus, the test which we must apply in determining likelihood of
confusion is not whether the marks are distinguishable upon a side-by-side
comparison, but whether they so resemble one another as to be likely to
cause confusion and this necessarily requires us to consider the fallibility
of the memory of the average purchaser, who normally retains but a general
impression of trademarks over a period of time, and would not recollect
minute details as to specific differences.
204 USPQ at 409.
B. The Goods
Both parties identify toys, and as such the goods of both parties are presumed to be encountered by the same consumers in the same the same channels of trade. (The applicant is referred to the evidence attached to the earlier Office Action issued on 22 December 2018.) Nevertheless, the applicant argues that confusion is not likely as the purchasers of the goods are knowledgeable parents and children. Even if consumers of the compared goods and/or services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
Furthermore, the applicant is further advised that Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording TULIP to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. These registrations appear to be for goods and/or services that are predominantly different from or unrelated to those identified in applicant’s application.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording TULIP is weak or diluted.
Further, evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording TULIP is weak or diluted.
C. Conclusion
The refusal to register the applicant’s TULIP under Trademark Section 2(d) is accordingly maintained and is hereby made FINAL.
RESPONSE
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
EARLIER-FILED REFERENCE – Withdrawn
Upon further review, the reference to earlier-filed Application Serial No. 86519406 as a potential bar to registration is WITHDRAWN.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Katherine Stoides/
Examining Attorney
Law Office 101
571-272-9230
katherine.stoides@uspto.gov (unofficial use only)
RESPONSE GUIDANCE