To: | Parton, Dolly (wholbrow@buchalter.com) |
Subject: | U.S. Trademark Application Serial No. 88175361 - DOLLY'S BABY BLUES - D6525.5015 |
Sent: | November 24, 2020 12:17:39 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88175361
Mark: DOLLY'S BABY BLUES
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Correspondence Address: |
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Applicant: Parton, Dolly
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Reference/Docket No. D6525.5015
Correspondence Email Address: |
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FINAL 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) 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: November 24, 2020
This Office action is in response to applicant’s communication filed on October 23, 2020.
In a previous Office action dated April 23, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: provide a domicile and the named individual’s consent.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: applicant has provided a domicile address and consent to use the individual’s name. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04. All previous arguments and evidence, where applicable, are incorporated by reference herein.
Summary of Issues Made Final Applicant Must Address:
Section 2(d) Refusal – Likelihood of Confusion
The refusal to register the applied-for mark is now made FINAL because of a likelihood of confusion with the mark in U.S. Registration No. 4165139 (VENICE BABY BLUES BBQ with design). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration in the October 3, 2019 Office action.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the services. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the services are compared to determine whether they are similar or 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, (a)(vi).
Comparison of 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).
Applicant points to the fact that visually, these marks are very different, depending on registrant’s design elements. However, as stated previously, 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 services. 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)).
Applicant argues that consumers would realize the difference between VENICE BABY BLUES BBQ and DOLLY’S BABY BLUES. However, VENICE is disclaimed in registrant’s mark, and, as argued previously, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is geographically descriptive for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
The examining attorney acknowledges that VENICE is still part of the mark, despite being disclaimed, but also notes that as a consumer might very well drop the term VENICE both because of its descriptiveness and its placement in the mark, and refer to registrant’s mark as BABY BLUES BBQ. At which point, the major difference between the marks is the addition of DOLLY’S. For this reason, even if potential purchasers realize the apparent differences between applicant’s and registrants’ marks, they could still reasonably assume, given the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant's services provided under the DOLLY’S BABY BLUES mark constitute a new or additional service line from the same source as the services sold under the VENICE BABY BLUES BBQ mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
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 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. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising only a small number of third-party registrations for similar marks with similar 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 BABY or BLUE is weak or diluted.
The question of dilution of either of these words separately, though, is immaterial. That is, even if the examining attorney conceded that, for example, BLUE was weak or diluted, the term BABY BLUE or BABY BLUES is not. Indeed, applicant shows no evidence that anyone else on the register is using the term with these services. As the attached page from Merriam-Webster shows, the term BABY BLUES has particular connotations that BABY and BLUE separately do not have.
The dominant element of registrant’s mark is BABY BLUES, which is not dilute, and arbitrary in relation to the services, making it a strong mark. Applicant’s mark, DOLLY’S BABY BLUES is identical in part, notably, to the dominant part of registrant’s mark. For these reasons, applicant’s and registrant’s marks have similar overall commercial impressions and therefore are confusingly similar.
Comparison of Services
Registrant’s services are, “bar and restaurant services.”
Applicant’s services are, “bar services; cocktail lounge services; restaurant services; café services; services for providing food and drink; food and drink catering services; cocktail lounge buffets; private members drinking club services, namely, arranging for specialty cocktails, table service, club and restaurant reservations and club events; private members dining club services, namely, arranging for table service, provision of food and drink, club and restaurant reservations; hospitality services, namely, restaurant services, bar, club and cocktail lounge services; rental of rooms for social functions; booking and reservation services for all the aforesaid; providing information in the field of hospitality, food and drinks; advisory and consultancy services relating to the aforesaid services; providing a website featuring information in the field of recipes and cooking.”
Applicant has made no further arguments suggesting the services are not related. As previously stated in the April 21, 2020 Office action, the services are in part legally identical.
Because applicant’s and registrant’s marks are confusingly similar and their services are closely related, the refusal to register applicant’s mark must be made FINAL due to a likelihood of confusion.
Responding to this Action
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Leslee A. Friedman/
Leslee A. Friedman
Trademark Examining Attorney
Office 120
leslee.friedman@uspto.gov
(571) 272 - 5278
RESPONSE GUIDANCE