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:  May 01, 2020

 

 

 

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INTRODUCTION

 

On September 19, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88072684.  The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.  In addition, action on this application was suspended pending disposition of cited U.S. Registration No. 2279785, for which maintenance documents were due to be filed.  See 37 C.F.R. §2.67; TMEP §716.02(e).  USPTO records indicate that the required maintenance documents have been filed, and that the cited registration remains valid.  Accordingly, examination is herein resumed. 

 

In the previous Office action dated March 21, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Sections 2(d) for a likelihood of confusion with the registered marks in U.S. Reg. Nos. 5037097, 2902061, and 2279785, which was maintained and continued in the Suspension Notice dated March 19, 2019.

 

The trademark examining attorney maintains and now makes FINAL the Section 2(d) refusals.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – FINAL REFUSAL

The refusal to register the applied-for mark is now made final as to Class 028 because of a likelihood of confusion with the marks in U.S. Registration Nos. 2279785 and 5037097.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  A copy of the registration was previously attached and is incorporated herein by reference.

The refusal to register the applied-for mark is now made final as to International Class 025 because of a likelihood of confusion with the mark in U.S. Registration No. 2902061.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  A copy of the registration was previously attached and is incorporated herein by reference.

I.                    Legal Standards for Trademark Act Section 2(d)

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In any likelihood of confusion analysis, two key considerations are: (1) the similarities between the marks, and (2) the similarities between the goods. 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 goods 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).

 

Applicant has applied to register, as amended:

 

• NURTURE (Design Plus Words) for "clothing, namely, tops, bottoms, and sleepwear for infants, not including shoes," in International Class 025, and “Toys, namely, stuffed and plush toys,” in International Class 028.

 

The registered marks are:

 

• NURTURE BEAR (Typed Drawing) for "stuffed animals," in International Class 028 (U.S. Reg. No. 2279785);

 

• NURTURE (Typed Drawing) for “shoes,” in International Class 025 (U.S. Reg. No. 2902061); and,

 

• NURTURE SMART (Typed Drawing) for “crib mobiles,” in International Class 028 (U.S. Reg. No. 5037097).

 

II.                 The significant similarities between the marks combined with the relatedness of the goods makes source confusion highly likely

 

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Applicant’s argues that the alleged weakness of the registered marks, combined with the differences between the marks and the goods, obviates any likelihood of confusion.  Applicant’s arguments have been considered and are found unpersuasive as follows.

 

Specifically, with respect to applicant’s argument as to the “weakness” of the wording in the mark, applicant provided no evidence and merely referred to a total number of “live” registrations and active applications containing the term.  However, merely referencing registrations does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.

 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, registrations which have not been made of record will not be considered, and applicant’s arguments relying upon such registrations are therefore found unpersuasive. 

 

In this case, the applied-for mark is comprised of the word NURTURE, with a stylized “T”.  The stylization of the “T” does not change the meaning or commercial impression of the wording.    As established in the previous Office action, the minor differences in the applied-for marks in sound, appearance, and commercial impression would fail to obviate confusion when used in conjunction with identical and/or confusingly similar.  Further, there is no evidence that the wording is so widely used in conjunction with the relevant goods that the relevant purchasers would view the very minor differences between the marks as distinguishing the source of the goods.  See, e.g., 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 marks are confusingly similar. 

 

 

The compared goods 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] 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).

Refusal as to Class 025 goods for confusion with goods in ‘061 registration

Neither the application nor the registration contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

While applicant has included additional language in its identification specifying “not including shoes,” the specification lacks any meaning limitation on the original identification which previously only included clothing tops, clothing bottoms, and sleepwear for infants, none of which is indicated or generally interpreted to be footwear.  Accordingly, the amended identification fails to obviate confusion.

The previously attached Internet evidence established that the same entity commonly provides the relevant goods and markets the goods under the same mark, and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  The additional evidence shows the marks Gymboree, Polo Ralph Lauren, Jumping Beans, Cat & Jack, and French Toast used to market goods of the type identified in both the application and registration, and further establishes that these goods are marketed together in the same channels of trade. 

In addition, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of representative third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely tops, bottoms, infant sleepwear, and shoes, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

While applicant argues that Mushroom Makers Inc. v. R.G. Barry Corp., 441 F. Supp. 1220, 196 USPQ 471 (DC SD NY 1977) supports a finding of no likelihood in this case, the case was not an ex parte proceeding, and the findings therein are wholly distinguishable from the case at hand.  Accordingly, applicant’s arguments are found unpersuasive, and applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

Refusal as to Class 028 goods for confusion with goods in ‘785 registration

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “toys, namely, stuffed and plush toys,” which presumably encompasses all goods of the type described, including registrant’s more narrow goods for “stuffed animals,” a specific type of stuffed or plush toy.  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.  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 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 are related.

Refusal as to Class 028 goods for confusion with goods in ‘097 registration

Applicant argues that its deletion of “mobiles” from the identification nullifies the refusal as to the mark in U.S. Reg. No. 5037097.  However, the refusal was not limited to the identical goods and therefore applicant’s deletion would not obviate the refusal.  Applicant itself provides both mobiles and stuffed toys, as shown by applicant’s specimens, so the goods are provided in commerce under the same marks.  In addition, the attached Internet evidence consisting of website screenshots from third party retailers Amazon and Target establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same marks, and that the goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Specifically, the attached evidence shows goods of the type identified in the application and registration marketed under the same brands, including Lambs&Ivy, The Peanutshell, Bedtime Originals, NoJo, Kaloo.  The evidence also establishes that mobiles are commonly comprised of plush animals.

 

In addition, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of representative third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely mobiles and stuffed and/or plush toys, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Based on the overlapping channels of trade and conditions under which the relevant goods and are commonly sold or provided in commerce, the marks are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

III.              Conclusion

 

In this case, applicant's make is highly similar in overall sound, appearance, and commercial impression to each of the registered mark, the applied-for mark appearing identical or identical in part to the registered marks. The use of confusingly similar marks in conjunction with highly related or legally identical goods creates a substantial likelihood that the relevant consumers will be confused as to the source of the goods.  The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. In re Power Distrib., Inc., ___ USPQ2d ___, Ser. No. 77825939, 2012 TTAB LEXIS 402, at *12 (Sept. 29, 2012); TMEP §1207.01(d)(i); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).  

 

For these reasons, the refusal to register the mark pursuant to Section 2(d) of the Trademark Act is made FINAL.

 

RESPONSE GUIDELINES FOR FINAL OFFICE ACTIONS

 

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).

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@uspto.gov

 

 

 

 

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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 01, 2020 for

U.S. Trademark Application Serial No. 88247182

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 01, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”