Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  September 10, 2019

 

This final Office action acknowledges applicant’s response filed on August 28, 2019.  Applicant has submitted an acceptable amended mark description.  The amendment to Class 20 is unacceptable as explained below.  Applicant been deleted International Class 28 from the application and therefore the specimen requirement for Class 28 is moot.   

 

In the response, applicant argued that the refusal under Section 2(d) of the Trademark Act should be withdrawn in light of the amended identification of goods and because the cited mark is registered on the Supplemental Register.  The examining attorney considered applicant’s arguments and any additional materials submitted with the response.  However, the amendment to Class 20 does not serve as grounds for withdrawing the refusal, applicant has not shown why the marks would not be confused, nor has applicant rebutted the evidence illustrating the relationship of the goods.  Consequently, the Section 2(d) refusal is made final.

 

Section 2(d) Final Refusal

 

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. 4745403.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

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 and/or services 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).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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.

 

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 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).

 

Applicant’s proposed mark is BOYD and design.  The mark in the cited registration is BOYD.  As stated in the initial Office action, both marks share identical literal elements that will be used by consumers when verbally communicating the source of the goods thus rendering the design element in applicant’s mark less significant when comparing the similarity of the two marks.   

 

Applicant argues that the scope of protection to which registrant’s mark is entitled is narrower than a mark registered on the Principal Register, and that under this standard, applicant’s mark is sufficiently dissimilar from the cited registration to avoid confusion.  In support of this argument, applicant provides the following citation:  “In re Cerner Corp., 2001 TTAB Lexis 87.”  However, the Board’s reversal of the 2(d) refusal in that case was based on a determination that the cited mark albeit registered on the Supplemental Register, was merely descriptive or weak and therefore entitled to a narrow scope of protection.  The mark BOYD is not descriptive of the goods or weak as applied to office furniture.  Applicant should note the appellate court’s decisions in In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir. 1986) and In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) confirmed the properness of citing marks on the Supplemental Register as a bar to registration.  Contrary to applicant’s argument, there is no categorical rule that citation of a registration on the Supplemental Register is limited to a different test for likelihood of confusion than should be applied in other cases.  Accordingly, applicant’s mere reliance on the fact that the mark BOYD is registered on the Supplemental Register as grounds for withdrawing the Section 2(d) refusal is not well taken. 

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

When viewing the marks to determine whether there are sufficient similarities to cause confusion or cause someone to associate one mark with the other mark, the examining attorney has found that applicant’s mark possess such similarities and it conveys a similar commercial impression conveyed by the cited mark. 

 

Comparison of Goods

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant’s mark is associated with furniture for use in dental and medical offices; booster seats for use by children in dental or medical examination chairs.[1]  The cited mark is BOYD used in connection with office furniture and office seating furniture.  The goods “furniture for use in dental and medical offices” would be encompassed by registrant’s broad description “office furniture and office seating furniture” which is not restricted to particular office settings.  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, in part.  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)).

 

 

Attachments retrieved from the GOOGLE® search engine show that applicant’s and registrant’s furniture are provided together by the same company and encountered by the same classes of purchasers.  As a result, consumers who encounter these goods under very similar marks are likely to mistakenly believe that they come from a common origin or are somehow connected.

 

Applicant has not persuaded the examining attorney that the marks are unlikely to cause confusion.  Further, there is sufficient evidence of record which shows the relationship of the goods associated with each mark.  Accordingly, the examining attorney finds it likely that persons encountering registrant’s office furniture and office seating furniture under the mark BOYD, and applicant’s dental and medical office furniture sold under the mark BOYD and design, would assume a relationship between these goods.  In view of the similar commercial impressions created by the marks, it would be most reasonable for potential purchasers to mistakenly believe that BOYD office furniture is a product not only emanating from, but also directly associated with, the same source providing dental and medical office furniture. 

 

Applicant should note that any doubt on the question of likelihood of confusion must be resolved against the newcomer, as the newcomer has the opportunity of avoiding confusion and is obligated to do so.  See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).  Therefore, the refusal under Section 2(d) of the Trademark Act is maintained and final.  

 

Identification of Goods

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on August 28, 2019.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original portion of the identification in the application (“furniture for use in dental and medical offices”) remain operative for purposes of future amendments.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application, as amended, identifies the goods for Class 20 as follows:  

 

“Non-metal cabinetry for use in dental and medical offices; booster seats for use by children in dental or medical examination chairs.”

 

However, the portion “non-metal cabinetry for use in dental and medical offices” does not identify furniture.  See attached definition of the term “furniture.”  Applicant has impermissibly added “cabinetry” to the application.  This portion of the proposed amendment exceeds the scope of the current identification because “cabinetry” was not included in Class 20 of the application which was clearly restricted to “office furniture; furniture for use in dental and medical offices; booster seats.” 

 

The following amended identification of goods is acceptable:

 

Medical and dental examination and treatment chairs and benches; patient medical treatment tables; medical trays for dental instruments; dental operating and exam lamps – Class 10;

 

Drying apparatus for drying medical and dental tools prior to sterilization; self-contained water delivery system for use in dental offices comprised of a water purification and filtration apparatus, PSI indicators, hoses and spray nozzles – Class 11;

 

Mobile storage cart for use in dental and medical offices – Class 12;

 

Booster seats for use by children in dental or medical examination chairs – Class 20. [note:  applicant deleted “office furniture” from the identification and therefore it cannot be reinserted]   

 

Specimen – Class 20

 

Registration was refused because the specimen for Class 20 did not show the applied-for mark in use in commerce in connection with any of the goods in that class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Applicant’s substitute specimens show the mark used in connection with cabinetry and not office furniture for use in dental and medical offices. 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

 

 

 

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)

 

 

/Christopher Buongiorno/

Christopher Buongiorno, Attorney

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

 

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.