United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88259214
Mark: GAIA
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Correspondence Address: |
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Applicant: POPUP DESIGN, S. DE R.L. DE C.V.
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Reference/Docket No. 123064-0001
Correspondence Email Address: |
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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 04, 2019
This Office action is in response to applicant’s communication filed on September 27, 2019.
In a previous Office action dated March 27, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to amend the identification of goods and services.
Based on applicant’s response, the trademark examining attorney notes that the requirement for an amended identification of goods and services has been SATISFIED. 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.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Trademark Act Section 2(d) PARTIAL FINAL Refusal – Likelihood of Confusion – International Class 020
This partial refusal applies to International Class 020 only.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark in U.S. Registration No. 5230875 as to be likely, when used on the identified goods and/or services, to cause confusion, or to cause mistake, or to deceive. The examining attorney has considered applicant’s arguments carefully but has found them unpersuasive. 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. 5230875. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
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.
Applicant’s mark is GAIA for “Furniture, mirrors, picture frames; goods made of wood or of plastic not included in other classes, namely, statues of wood or plastic, figurines of wood or plastic, statuettes of wood or plastic, flower-pot pedestals of plastic, and coat hangers and clothes hangers of wood or plastic; all of the foregoing not including baskets of wicker,” in International Class 020, in relevant part.
The cited registration is GAIA CONTEMPORARY HOME for “baskets of wicker,” in International Class 021.
Comparison of the 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).
In the initial Office Action, the examining attorney found applicant’s mark to be highly similar to the cited registration where (1) the marks share the word GAIA, and (2) the additional wording in registrant’s mark did not significantly distinguish the marks.
In applicant’s response, filed on September 27, 2019, applicant does not argue that the marks are dissimilar.
Comparison of the Goods
In the initial Office Action, the examining attorney found that applicant’s goods directly overlapped with, and/or were highly related to, registrant’s goods where entities that provide wicker baskets also often provide furniture and various home goods under the same mark. To this point, the examining attorney included evidence from Wayfair.com, WorldMarket.com, and PotteryBarn.com.
In applicant’s response, applicant argues that the goods are distinguishable in nature because (1) applicant’s identification specifically excludes registrant’s goods, (2) “something more” is required to show that the goods are related, (3) the goods are not interchangeable, and (4) the evidence included by the examining attorney consists of mass merchandiser stores.
Examining attorney respectfully disagrees with applicant’s arguments.
First, applicant argues that the goods are distinguishable because applicant’s amended identification specifically excludes registrant’s wicker baskets. This argument is not persuasive. The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi). The fact that registrant’s goods are specifically excluded does not mean that the remaining goods that are listed in the application are no longer similar to the goods in the cited registration. The previously attached evidence demonstrates that the goods are related because they are often provided under the same mark from the same source to the same class of consumers in the marketplace.
Applicant also argues that “something more” is required to show that the goods are related. The examining attorney respectfully disagrees. When the relatedness of the goods and services is not evident, well known, or generally recognized, "something more" than the mere fact that the goods and services are used together must be shown. TMEP §1207.01(a)(ii) citing In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). This principle is not applicable in the present case where both applicant and registrant list similar goods, not goods versus services.
Third, applicant argues that the goods are distinguishable where the goods are not used interchangeably. This is not dispositive of the similarity of the 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). Here, the examining attorney does not find that the goods are interchangeable. Instead, the goods are related and highly similar.
Lastly, applicant argues that the evidence submitted by the examining attorney includes big box retailers and mass merchandiser stores and thus is not sufficient to support a finding that the goods are related. This argument is unpersuasive where the previously attached evidence includes retailers that operate in the specific field of furniture and home goods. This is not congruous to big box retailers such as Walmart or Target that provide goods from many different fields under the same mark. Each of the stores referenced by the examining attorney are niche or specialty stores that consumers frequent specifically to furnish their homes. Additionally, the previously attached evidence relies on specific sources or brands that are sold by a larger retailer which may include other goods from various other sources. The fact remains that the particular goods in question (wicker baskets vs furniture) are provided by the same source under the same mark.
As applicant states “the issue is whether the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be ecountered by the same persons under circumstances that would give rise to the mistaken belief that they orginate from the same source.” See applicants response dated September 27, 2019 citing On-line Carline Inc. v. America Online Inc., 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i). Here, the previously attached evidence demonstrates that both applicant’s and registrant’s goods are related such that the goods are marketed under the same marks to the same persons or class of consumers and are likely to be encountered by the same persons or class of consumers. To bolster this point, the examining attorney is also including here additional evidence that applicant and registrant’s goods are often sold and marketed under the same mark to the same class of consumers. See attached evidence from westelm.com, crateandbarrel.com, and ashleyfurniture.com all providing wicker baskets, furniture and statues/figurines under the same mark).
Because the marks are similar, and the goods are related, it is likely that consumers would believe that the goods emanate from a common source.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
For the reasons discussed above, the refusal to register under Trademark Act Section 2(d) is maintained and made FINAL.
RESPONSE ADVISORIES
In such case, the application will proceed for International Class 035 only.
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)
/Breanna Freeman/
Examining Attorney
Law Office 114
571-272-7099
breanna.freeman@uspto.gov
RESPONSE GUIDANCE
