| To: | Overstock.com, Inc. (trademarks@overstock.com) |
| Subject: | U.S. Trademark Application Serial No. 88250356 - CHLOE - TM-00462 |
| Sent: | November 18, 2019 09:46:09 AM |
| Sent As: | ecom109@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88250356
Mark: CHLOE
|
|
|
Correspondence Address:
|
|
|
Applicant: Overstock.com, Inc.
|
|
|
Reference/Docket No. TM-00462
Correspondence Email Address: |
|
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: November 18, 2019
This Office Action is in response to applicant’s Petition to Revive Abandoned Application filed on October 8, 2019, in response to the March 28, 2019, Office Action. Although applicant’s petition has been accepted, applicant must address the new issue identified below. Further, the Trademark Act Section 2(d) refusal is continued and maintained.
This Office action is supplemental to and supersedes the previous Office action issued on March 28, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s): Identification of Goods and/or Services- Indefinite Partial. See TMEP §§706, 711.02.
In a previous Office action(s) dated March 28, 2019, 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(s): Identification of Goods and Services- Indefinite and Multiple-Class Application- Advisory.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: Multiple-Class Application- Advisory. See TMEP §713.02. Further, the trademark examining attorney notes that although applicant satisfied the identification of goods and services indefinite requirement as explained in the March 28, 2019 Office action, upon further review the examining attorney notes that the identification of goods and services indefinite requirement did not fully address all of the deficiencies with applicant’s original identification of goods and services and additional amendments are required.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous March 28, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
This refusal is continued and maintained.
Registration of the applied-for mark remains refused because of a likelihood of confusion with the following mark(s)
ASHLEY CHLOE, in standard characters, for “Audio headphones; Audio speakers; Baby monitors; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Bags for cameras and photographic equipment; Batteries and battery chargers; Battery cables; Battery cases; Battery charge devices; Battery chargers; Battery chargers for use with telephones; Battery packs; Cell phone battery chargers; Cell phone cases; Cell phone covers; Computer application software for mobile phones, namely, software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers; Computer bags; Computer carrying cases; Computer software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers that may be downloaded from a global computer network; Computers; Smartphones” in Class 9 (U.S. Registration No. 4974077).
CHLOE, in standard characters, for “Retail store services in the field of perfumery, perfumes, essential oils, soaps, cosmetic preparations for skin, skin creams, skin lotions, creams and lotions for the face, body, and the hands, body deodorants, eyewear, spectacles, sunglasses, cases, containers, chains and cords for spectacles and sunglasses, frames for spectacles and sunglasses, jewelry, watches, chronometers and personal ornaments, writing instruments, pouches for writing instruments, gift cases for writing instruments, writing cases, personal organizers, desk sets, pens, pencils, pen and pencil holders, leather and imitation leather bags, backpacks, clutch bags, beach bags, shopping bags, sling bags for carrying infants, cosmetic bags, handbags, purses, briefcases, suitcases and travelling bags, umbrellas, blouses, shirts, tee-shirts, knitwear, jackets, dresses, skirts, trousers and suits, caps, hats, scarves, lingerie, sleepwear, coats, boots, shoes, slippers provided via the Internet and other computer and electronic communications networks; promotion services through provision of sponsored links to third party websites; advertising services” in Class 35, “Telecommunication services, namely, routing of Internet queries from end users to website hosting providers” in Class 38, “Computer services, namely, domain forwarding services; domain name search services, namely, conducting online computerized searches for the availability of domain names; computer security services, namely restricting access to computer networks to authorized users by means of a website featuring technology that verifies user identities; Internet Protocol (IP) address verification services” in Class 42, and “Registration of domain names for identification of users on a global computer network; providing an online computer database in the field of domain name registration information; providing user authentication services in e-commerce transactions” in Class 45 (U.S. Registration No. 4468931).
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration(s).
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
1. Similarity of the Marks
The applicant’s mark: CHLOE in standard characters.
The registrants’ marks: ASHLEY CHLOE in standard characters (U.S. Registration No. 4974077).
CHLOE in standard characters (U.S. Registration No. 4468931).
The dominant portion of the compared marks are similar in appearance and meaning because they all contain the name “CHLOE”. Comparing the literal word portions of the marks, the marks are similar except applicant’s mark and U.S. Registration No. 4468931 simply contain the name “CHLOE”, whereas U.S. Registration No. 4974077 contains the name “CHLOE” preceded by the name “ASHLEY”, that is “ASHLEY CHLOE”. Thus, the dominant portion of the compared marks are similar and create the same overall commercial impression and the marks are thus confusingly similar for the purposes of determining likelihood of confusion.
In applicant’s response, applicant did not directly address the similarity of the marks. See applicant’s response. As explained above, the Examining Attorney maintains that the dominant portion of the compared marks are identical such that the marks are confusingly similar for the purposes of determining likelihood of confusion.
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Thus, the marks convey the same commercial impression and are substantially similar in this comparison. Consumers are likely to be confused as to the source of the origin of the goods and/or services and the marks are similar. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Therefore, the marks are confusingly similar.
2. Relatedness of the Goods and/or Services
The applicant’s amended goods and/or services are:
Class 9: A multiple user software chatbot program, namely, a multiple user computer chatbot software that allows for real-time communication for stimulating conversations
Class 35: Product selection and order fulfillment mechanism, namely, providing commercial information and advice for consumers in the nature of website assistance and product information for the purpose of assisting with the selection of general consumer merchandise
Class 42: Platform as a service (PAAS) featuring a computer software platform in the nature of a chatbot used to answer consumer questions and provide assistance for online shopping.
The registrants’ relevant goods and/or services are:
Class 9: Audio headphones; Audio speakers; Baby monitors; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Bags for cameras and photographic equipment; Batteries and battery chargers; Battery cables; Battery cases; Battery charge devices; Battery chargers; Battery chargers for use with telephones; Battery packs; Cell phone battery chargers; Cell phone cases; Cell phone covers; Computer application software for mobile phones, namely, software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers; Computer bags; Computer carrying cases; Computer software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers that may be downloaded from a global computer network; Computers; Smartphones (U.S. Registration No. 4974077).
Class 35: Retail store services in the field of perfumery, perfumes, essential oils, soaps, cosmetic preparations for skin, skin creams, skin lotions, creams and lotions for the face, body, and the hands, body deodorants, eyewear, spectacles, sunglasses, cases, containers, chains and cords for spectacles and sunglasses, frames for spectacles and sunglasses, jewelry, watches, chronometers and personal ornaments, writing instruments, pouches for writing instruments, gift cases for writing instruments, writing cases, personal organizers, desk sets, pens, pencils, pen and pencil holders, leather and imitation leather bags, backpacks, clutch bags, beach bags, shopping bags, sling bags for carrying infants, cosmetic bags, handbags, purses, briefcases, suitcases and travelling bags, umbrellas, blouses, shirts, tee-shirts, knitwear, jackets, dresses, skirts, trousers and suits, caps, hats, scarves, lingerie, sleepwear, coats, boots, shoes, slippers provided via the Internet and other computer and electronic communications networks; promotion services through provision of sponsored links to third party websites; advertising services (U.S. Registration No. 4468931).
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Absent restrictions in an application and/or registration, the identified goods and/or services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
Further, the applicant uses broad wording to describe the goods and/or services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow identification. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). For example, applicant’s identification of “a multiple user software chatbot program that allows for real-time communication” is presumed to encompass the related listed goods and/or services in U.S. Registration No. 4974077’s identification of goods and/or services including “computer software for use in enabling on-line purchases, for use in controlling other electronic devices, and for use in enabling on-line communication with customers that may be downloaded from a global computer network”.
The previously attached as well as newly attached Internet evidence, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark and the goods and/or services are similar or complementary in terms of purpose or function. This evidence shows that the applicant’s “multiple user software chatbot program that allows for real-time communication”, “chatbot used to answer consumer questions and provide assistance for online shopping”, and “providing website assistance and product information for the purpose of assisting with the selection of general consumer merchandise” are commercially related and likely to be encountered together in the marketplace by consumers with U.S. Registration No. 4468931’s “retail store services… provided via the Internet and other computer and electronic communications networks”. Therefore, consumers are likely to be confused and mistakenly believe that the products and/or services originate from a common source.
In applicant’s response, applicant argues that “consumers who encounter Applicant’s and Registrant’s goods and services would not be likely to believe that they come from a common source”. See applicant’s response. Applicant maintains that “[p]urchases of Applicant's goods and services and the goods and services associated with the cited marks are carefully made, [by sophisticated purchasers] further avoiding any likelihood of confusion”. Id.
The Examining Attorney respectfully disagrees and maintains that the previously attached as well as newly attached evidence clearly demonstrates the relatedness of the goods and services offered by applicant and registrant. Further, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Additionally, applicant alleges that “[t]he cited marks are weak owing to the large number of registrations and applications containing the term CHLOE” maintaining that there are “272 records in all classes containing the term CHLOE”. See applicant’s response.
Again, the Examining Attorney respectfully disagrees. Applicant has submitted a list of registrations. However, the mere submission of a list of registrations or a copy of a private company search report 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, these registrations will not be considered.
Thus, these third-party registrations have little, if any, probative value with respect to the registrability of applicant’s mark.
Thus, applicant’s and registrant’s goods and/or services 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).
IDENTIFICATION OF GOOD & SERVICES-INDEFINITE PARTIAL
This requirement applies to International Classes 9 and 42 only. The identification of services is acceptable for Class 35.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant may adopt the following wording, if accurate:
International Class 9: “A multiple user downloadable software chatbot program, namely, a multiple user computer chatbot downloadable software that allows for real-time communication for stimulating conversations”
International Class 42: “Platform as a service (PAAS) featuring an online non-downloadable computer software platform in the nature of a chatbot used to answer consumer questions and provide assistance for online shopping”.
While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed. Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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 nonfinal Office action
/Carolyn Wlodarczyk/
Carolyn Wlodarczyk
Trademark Examining Attorney
Law Office 109
571-272-9273
carolyn.wlodarczyk@uspto.gov
RESPONSE GUIDANCE
