To: | KOALA SLEEP PTY. LTD. (ipdocketing@haynesboone.com) |
Subject: | U.S. Trademark Application Serial No. 88320010 - KOALA - 70708.4 |
Sent: | October 18, 2019 04:24:54 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88320010
Mark: KOALA
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Correspondence Address: |
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Applicant: KOALA SLEEP PTY. LTD.
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Reference/Docket No. 70708.4
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: October 18, 2019
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending applications below have earlier filing dates or effective filing dates than applicant’s application. If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application(s) below was sent previously.
- U.S. Application Serial No(s). 88139054, 86919193, and 87282633
Refusals and requirements resolved and maintained and continued. The following requirement is obviated:
• The requirement to correctly classify the goods “pillows” has been obviated by moving them to International Class 20, the correct class for these goods.
See TMEP §713.02.
The following refusal(s) is/are maintained and continued:
See id. These refusals will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below. Applicant argues that since its registered mark KOALA FOAM has coexisted on the Register with the cited KOALA BABY marks for a number of years, that there is no likelihood of confusion with the instant KOALA mark. However, 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)).
In this case, there are differences between the instant application and the prior registered mark that necessitate a different outcome. First, the instant mark KOALA lacks the additional word FOAM, so if applicant chooses to regard KOALA FOAM and KOALA as “substantially similar” marks, then applicant must concede that the instant mark KOALA is substantially similar to the cited KOALA BABY marks, as the degree of difference is similar, as both FOAM and BABY are descriptive terms. Second, the identification of goods in the instant application is far broader than the foam-filled furniture identified in the prior registration. Significantly, it includes numerous items of bedding that directly conflict with registrant’s bedding goods, such as mattresses, mattress foundations, bed bases, beds, sofa beds, bed sheets, duvet covers, pillows, and pillow covers. Therefore, even if applicant’s argument could be accepted, it would not apply to most of the goods in International Class 20, or to any of the goods in International Class 24.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Michael Engel/
Trademark Examining Attorney
Law Office 107
Michael.Engel@uspto.gov
(571) 272-9338