United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 31, 2020
On April 30, 2019, action on this application was suspended pending the disposition of U.S. Application
Serial No. 87307876. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely
and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
- Section 2(d) Refusal – Likelihood of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
U.S. Registration No. 5952568. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is BABYFIRST, in standard characters, for use on:
Class 10: Baby bottle nipples; Baby bottles; Feeding bottles; Pacifiers for babies; Teething rings
Registrant’s mark is BABY FIRST SKIN CARE, with design elements, for use on:
Class 3: Cosmetic preparations for body care
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 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). Any evidence of record related to those factors need be
considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg.
Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir.
1997)).
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.
Similarity 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)), aff’d per curiam, 777 F. App’x
516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s mark BABYFIRST, is entirely incorporated in the registration BABY FIRST SKIN
CARE. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome
a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419,
422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556,
557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding
BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP
§1207.01(b)(iii). In the present case, the marks are identical in part.
Additionally, the wording BABY FIRST is the dominant wording in the registration because consumers are
generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in
part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead
word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is
particularly significant because consumers typically notice those words first”).
Moreover, the wording in the registration is dominant over the design because when
evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by
them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d
1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP
§1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight
in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67,
101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Further, a mark in typed or standard characters, as is the applied-for mark, may
be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not
avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir.
1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Since the marks are highly similar in sound, appearance, and connotation, source confusion is likely.
Relatedness of the Goods
The goods 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 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).
The attached Internet evidence, consisting of third-party websites, establishes that the same
entity commonly provides the relevant goods and markets the goods under the same mark, 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, and the goods are similar or complementary in terms of purpose or function. See Gerber, Avent, and Chicco websites
attached. For example, Gerber provides baby bottles and cosmetic preparations in the nature of baby lotion under the same mark.
Thus, 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).
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore,
applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal,
applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should
set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Please call or email the assigned trademark examining attorney with questions about this Office
action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or
requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application
record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
.
How to respond. Click to file a response to this nonfinal Office action.
/Laila Sabagh/
Laila Sabagh
Trademark Examining Attorney
Law Office 127
(571) 272-8230
Laila.Sabagh@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.
