United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88324309
Mark: MARINA
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Correspondence Address: 600 PEACHTREE STREET NE, SUITE 3000
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Applicant: I-Pay Global, LLC
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Reference/Docket No. 251612.82
Correspondence Email Address: |
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FINAL 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) 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: November 26, 2019
This Office action is in response to applicant’s communication filed on November 11, 2019. In the response, applicant presented argument in favor of registration.
Applicant’s arguments stated in the response of November 11, 2019 have been considered and found unpersuasive for the reason(s) set forth below. Accordingly, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 2366315. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
FINAL REFUSAL – LIKELIHOOD OF CONFUSION UNDER SECTION 2(D)
Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 2366315. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The cited registration was attached to the initial office action.
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 and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.
In the instant matter, applicant seeks registration of the mark MARINA for dolls, in Class 28. Registrant’s mark is MARINA for plush toys and toy figurines, in Class 28.
Similarities between the Marks
In the present case, applicant’s mark is MARINA and registrant’s mark is MARINA. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
In response to this issue, applicant opines that the record does not establish a likelihood of confusion.
Initially, the examining attorney notes that in reaching the conclusion that the marks are likely to cause confusion, he merely applied the applicable Trademark Law, namely, the two part analysis of the du Pont factors, in reaching the conclusion that the marks have similar commercial impressions and are likely to cause confusion.
The examining attorney further notes that it is appropriate to consider the overall commercial impression created by applicant’s mark MARINA and to compare the term MARINA with other marks to determine whether or not the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.
In the present case, applicant’s mark is MARINA and registrant’s mark is MARINA. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Comparison of Goods and Services
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In the instant matter, applicant’s identified goods are dolls, in Class 28. Registrant’s identified goods are plush toys and toy figurines, in Class 28.
In this case, it is initially noted that the goods of the parties are types of toys. Therefore, the issue is whether dolls and plush toys and/or toy figurines are related goods which share the same trade channels.
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 dolls, plush toys and toy figurines, 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).
Moreover, the examining attorney has attached articles obtained from the Google search engine. These articles are evidence that dolls, plush toys and toy figurines are produced by the same manufacturers and are marketed under the same trademarks.
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.
Applicant’s Arguments
In response to this issue, applicant argues that the evidence of record does not establish a likelihood of confusion. Assumedly, applicant’s argument is that the goods of the parties are not related goods which travel in the same trade channels.
With reference to applicant’s goods not being related, the examining attorney notes that determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
With respect to applicant’s first argument, it is noted that dolls, plush toys and toy figurines are related goods for children. See attached evidence from the Google search engine and the attached live registrations which include both dolls, plush toys and toy figurines. This evidence shows that dolls, plush toys and toy figurines are related goods.
As for applicant’s argument that the goods do not share the same the same trade channels, it is noted that as stated on the identifications, the goods and services 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)). Further, it is noted that the record herein is devoid of evidence that the goods do not share the same trade channels. Rather, the attached registrations and evidence from the Google search engine shows that it is common for manufacturers to manufacture both dolls, plush toys and toy figurines and market them under the same trademark. Thus, applicant’s and registrant’s goods are related which share the same trade channels.
Conclusion
Since the marks of the parties create the same general overall commercial impression and the goods of the parties are related and share the same trade channels, there is a likelihood of confusion between the marks and the registration must be refused.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/William H. Dawe, III/
Examining Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
Bill.Dawe@USPTO.GOV (not for fomal responses)
RESPONSE GUIDANCE