United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88192714
Mark: CELESTIA
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Correspondence Address:
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Applicant: INTRIGUE SHOWS, INC.
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Reference/Docket No. INTRIGUE-201
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: March 15, 2020
On September 12, 2019, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 87955415 and 79241235. Prior-pending application 87955415 has since been abandoned and is no longer a potential bar to the registration of applicant’s mark. However, prior-pending application 79241235 has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – Partial Refusal – Class 25
Registration of the applied-for mark is refused, in part, because of a likelihood of confusion with the mark in U.S. Registration No. 5736533. This refusal applies solely with regard to the applicant’s Class 25 goods identified as “Clothing, namely, t-shirts, sweatshirts, tank tops; baseball caps, jackets; hats.” Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
--General Principles in Determining 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.
--Similarities Between the Marks
In the present case, applicant’s mark is CELESTIA and registrant’s mark is CELESTIA. 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.
--Similarities Between the Goods
In this case, the applicant’s Class 25 goods identified as “Clothing, namely, t-shirts, sweatshirts, tank tops; baseball caps, jackets; hats” are related to the registrant’s goods identified as “Jewelry; cuff links; tie clips; rings; bracelets; earrings; necklaces; jewelry brooches; key rings of precious metal; timepieces and chronometric instruments; watches; chronometers; clocks; cases adapted for holding watches; dials for clocks and watches; movements for timepieces, namely, chronometers, watches, horological instruments and clocks; alarm clocks; watch bands; boxes of precious metal.” That is, they are types of goods which frequently originate from the same source.
--Conclusion
Where the marks are identical and the goods are related, confusion as to the source of the goods is likely. For the foregoing reasons, the mark, with regard to the Class 25 goods, is refused registration under Section 2(d) of the Trademark Act.
ADVISORY REGARDING FAILURE TO RESPOND
How to respond. Click to file a response to this nonfinal Office action.
/John Dwyer/
Examining Attorney
Law Office 116
571-272-9155
John.Dwyer1@uspto.gov
RESPONSE GUIDANCE