UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88319606
MARK: BOYIBOY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Zhou Yu
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/14/2019
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.
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.
Here, applicant has applied to register the mark BOYIBOY in standard characters for “Belts; Belts for clothing; Cycling bib shorts; Cycling shoes; Cycling shorts; Dress suits; Dresses; Galoshes; Gloves; Gloves as clothing; Hats; Neckties; Scarfs; Scarves; Shawls; Shoes; Shower caps; Ski boots; Skirt suits; Skirts; Socks; T-shirts; Trousers; Anklets; Boat socks; Dress straps; Head scarves; Head wraps; Hoods; Jackets; Jerseys; Leather hats; Mantles; Neck scarves; Pashmina shawls; Short sets; Shoulder scarves; Silk scarves; Sports shoes; Top hats; Trouser socks; Waist belts; Woollen socks; Yoga socks” in Class 25.
The mark in Registration No. 4786842 is BOYOBOY in standard characters for “Men’s, women’s and children’s clothing, namely, T-shirts, tank tops, sleeveless T-shirts, short sleeve T-shirts, long sleeve T-shirts, tops, sweatshirts, short sleeve shirts, long sleeve shirts, vests, headwear, hats and caps, beanies, visors, headwraps, bandanas, headbands, sweatbands, wristbands, sweatpants, sweatshorts, sweat suits, track suits, jackets, jeans, beachwear, swimwear, bathing suits and trunks, beach and bathing cover-ups, blazers, scarves, casual footwear, sandals, boots, socks, aprons, belts, shorts, board shorts, long pants, blouses, dresses, pullovers, knit shirts, sweaters, play suits, coats, wetsuits, wetsuit vests, wetsuit tops, wetsuit shorts, wetsuit gloves, wetsuit boots, sleepwear, robes, nightshirts, pajamas, underwear, bodysuits, leotards, leg warmers, jumpsuits, raincoats, parkas, ponchos, infant wear, cloth bibs” in Class 25.
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)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Here, applicant’s mark BOYIBOY has the same first and last syllable as the registered mark BOYOBOY. The only difference in sound and appearance between the two marks is that the applicant’s mark has an “I” while the registered mark has an “O” in the middle of the mark. As such, the marks are similar in sound, and highly similar in appearance, as the marks follow the same structure of BOY-vowel-BOY in a single, compressed term. Thus, the slight difference in sound and appearance is not enough to sufficiently differentiate the two marks, and consumers would likely be confused as to the source of the goods if they encountered both of these marks in commerce. Therefore, the two marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods
In this case, the goods in the application encompass many of the goods in the registration. Specifically, the application uses broad wording to describe “Belts;” “Dresses;” “Hats;” “Scarfs;” “Scarves;” “Socks;” “T-shirts;” and “Jackets;” which presumably encompasses all goods of the type described, including registrant’s more narrow men’s, women’s and children’s belts, dresses, hats, scarves, socks, t-shirts, and jackets. Furthermore, applicant’s “shoes” presumably encompasses “casual footwear” and “sandals” in the registration, and applicant’s “gloves” and “gloves as clothing” could encompass “wetsuit gloves” in the registration. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
In addition, several of the registrant’s identified clothing items for men, women, and children (which encompasses all consumers, as “children” refers to “a young human being below the age of puberty or below the legal age of majority” while men and women refer to people who have reached the age of majority, as per the attached dictionary definitions from Oxford Dictionaries) are broadly worded and could encompass clothing items in applicant’s identified list of goods. Specifically, “belts” in the registration presumably encompasses applicant’s more narrow “belts for clothing” and “waist belts”. The registration’s “shorts” presumably encompasses applicant’s “cycling bib shorts”, “cycling shorts”, and “short sets”. The registration’s “boots” presumably encompasses applicant’s “galoshes” and “ski boots”. See attached definition for “galosh” from The American Heritage Dictionary. The registration’s “long pants” presumably encompasses applicant’s “trousers”. See attached definition for “trouser” from The American Heritage Dictionary. The registration’s “socks” presumably encompasses applicant’s “anklets”, “boat socks”, “trouser socks”, “woollen socks”, and “yoga socks”. See attached definition for “anklet” from The American Heritage Dictionary. The registration’s “tops” presumably encompasses applicant’s “jerseys”. See attached definition for “jersey” from The American Heritage Dictionary. The registration’s “hats” presumably encompasses applicant’s “leather hats” and “top hats”. The registration’s “coats” presumably encompasses applicant’s “mantles”. See attached definition for “mantle” from The American Heritage Dictionary. And the registration’s “scarves” presumably encompasses applicant’s “neck scarves”, “head scarves”, “shoulder scarves”, and “silk scarves”. Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
As to applicant’s other goods, the attached third-party websites from Anthropologie, Nike, and Macy’s demonstrate that entities offering a variety of clothing items commonly market and sell articles such as applicant’s sports shoes, suits, neckties, skirts, shawls, head wraps, hoods, dress straps, and shower caps, and registrant’s dresses, belts, and tops under the same mark.
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods are related.
Because 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 must be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal 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.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.
ASSISTANCE
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.
/Maureen Reed/
Examining Attorney
Law Office 115
571-272-0851
maureen.reed@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.