To: | willow s krauchi (willow@willowwolfe.ca) |
Subject: | U.S. Trademark Application Serial No. 88315162 - FABLE - N/A |
Sent: | December 30, 2019 12:08:41 PM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88315162
Mark: FABLE
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Correspondence Address: |
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Applicant: willow s krauchi
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 30, 2019
On May 7, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87719212. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
The applicant has applied to register “FABLE” (in standard characters) for “Paint for artists; Painting sets for artists” in International Class 2 and “Artists’ brushes; Paint brush holders; Paint brushes; Paint boxes for use in schools and brushes sold as a unit” in International Class 16. The cited mark is “FABLE GRAFICO” (in stylized characters) for “Paint boxes; Artists’ brushes; Glue for stationery purposes; Dry erase board markers; Ball pens; Colored pencils; Mechanical pencils; Mechanical pencil leads; Correction fluids for documents; Pencils; Colored pens; Crayons; Pastels; Modelling clay; Modelling paste; Starch paste for stationery or household purposes; Highlighter pens; Rubber erasers; Marking pens; Writing brushes for calligraphy” in International Class 16.
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).
Furthermore, 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 and/or services 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).
Here, applicant’s mark is “FABLE” and registrant’s mark is “FABLE GRAFICO.” Because applicant’s mark is incorporated entirely within the registered mark, the marks are similar.
Additionally, the differences between the marks do not sufficiently distinguish the two because the shared wording appears at the beginning of both marks and the additional wording in registrant’s mark is disclaimed. Further, the fact that registrant’s mark appears in stylized characters is not sufficient to abrogate a likelihood of confusion because applicant’s standard character mark may be displayed in a manner similar to registrant’s stylized mark.
Thus, the marks are confusingly similar.
COMPARISON OF THE GOODS
Here, applicant’s goods are as follows:
International Class 2
Paint for artists; Painting sets for artists
International Class 16
Artists’ brushes; Paint brush holders; Paint brushes; Paint boxes for use in schools and brushes sold as a unit
Registrant’s goods are as follows:
International Class 16
Paint boxes; Artists’ brushes; Glue for stationery purposes; Dry erase board markers; Ball pens; Colored pencils; Mechanical pencils; Mechanical pencil leads; Correction fluids for documents; Pencils; Colored pens; Crayons; Pastels; Modelling clay; Modelling paste; Starch paste for stationery or household purposes; Highlighter pens; Rubber erasers; Marking pens; Writing brushes for calligraphy
Thus, both applicant’s and registrant’s goods include artists’ brushes and paint boxes and are therefore related.
For these reasons, there is a likelihood of confusion and the applied-for mark is refused.
COMMUNICATION
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. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
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/Matthew Ruskin/
Matthew Ruskin
Examining Attorney
Law Office 106
571-272-3466
matthew.ruskin@uspto.gov
RESPONSE GUIDANCE