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. 88291421
Mark: BAA BAA BUBBLES
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Correspondence Address: 60 East 42nd Street, Suite 2520
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Applicant: Spin Master Ltd.
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Reference/Docket No. N/A
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: October 16, 2019
This Office action is in response to applicant’s communication filed on September 13, 2019.
In a previous Office action dated March 27, 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 requirements: amend the identification of goods and services, disclaimer requirement and request for information.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: Disclaimer has been provided, identification of goods has been amended and the information requested has been provided. See TMEP §§713.02, 714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Refusal to register the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration Nos. 4824885 and 4456659 is hereby maintained and made FINAL. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
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 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. 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.
The applied-for mark is “BAA BAA BUBBLES” for “board games, party games, parlor games” in international class 28.
U.S. Registration No. 4824885 is for the mark “BAA BAA” and is used in connection with “Stuffed toy animals; Stuffed toys; Electronic action toys; Electronic learning toys; Electronic novelty toys, namely, toys that electronically record, play back, and distort or manipulate voices and sounds” in international class 28.
U.S. Registration No. 4456659 is for the mark “BAA-BAA-BARN” and is used in connection with “Children's multiple activity toys; Musical toys; Novelty toy items in the nature of a Musical Barn; Toy animals” in international class 28.
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 this case, applicant’s mark, “BAA BAA BUBBLES”, is confusingly similar to the registered marks “BAA-BAA-BARN” and “BAA BAA” because the marks are highly similar in sound, appearance, connotation, and commercial impression. Specifically, the marks share the wording “BAA BAA”, and this wording would be pronounced and displayed identically, thereby creating similarities in sound and appearance.
The only difference between the marks is that the applied for mark contains the additional wording “BUBBLES” and U.S. Registration No. 4456659 contains the additional wording “BARN”. This does not obviate the similarity between the marks because although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The wording “BUBBLES” and “BARN” is disclaimed matter in both marks. Therefore, this wording is less significant when comparing the marks.
Ultimately, applicant’s mark is likely to cause confusion with the registered mark because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers. Thus the marks are confusingly similar.
Comparison of the Goods
In this case, both applicant and registrant use the marks on similar and closely related goods.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of 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, “board games”, “party games”, “parlor games”, “stuffed toys”, “stuffed toy animals”, “musical toys” and “electronic action 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). (See attached U.S. Registration Nos. 5799046, 5885777, 5665552, 5699372, 5060622, 5533726, 5219077, 4403738, 3885995, 3329095, 3972343, 3830098 and 3358475)
Lakeshore
Alex Brands
Hasbro
Tin Toy Arcade
Mindware
Melissa & Doug
Mattel
Young Explorers
Consideration of Applicant’s Arguments
Applicant argues that “BAA BAA” is suggestive and not entitled to a wide scope of protection. This argument is unpersuasive because the applied mark and the registered marks are the only marks featuring the wording “BAA BAA” in relation to toys and, as the above evidence shows, the marks are used on closely related 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. 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).
Applicant argues that the co-existence of the cited registered marks is strong evidence that consumers can distinguish the differences between the marks and that the USPTO has previously found that no confusion exists between the cited marks. This argument is unpersuasive because prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Applicant argues that the goods provided by the applicant and the goods provided by the registrant’s are sufficiently different. This argument is unpersuasive because the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. In this case, the attached evidence shows that the goods provided by the applicant and the goods provided by the registrant are provided by the same source. Therefore, the goods remain closely related.
Accordingly, the goods of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
Therefore, upon encountering “BAA BAA BUBBLES”, “BAA BAA” and “BAA-BAA-BARN” used on the identified goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Accordingly, the refusal to register the applied- for mark because of a likelihood of confusion with the marks in U.S. Registration Nos. 4824885 and 4456659 is hereby maintained and made FINAL. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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)
ASSISTANCE
/Odette Martins/
Trademark Examining Attorney
Law Office 123
(571) 270-0122
odette.martins@uspto.gov
RESPONSE GUIDANCE
