To: | Imperial Toy, LLC (vic@brandidentitylawyer.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88339091 - TROUBLEMAKERS - impl-trblmkr |
Sent: | 5/6/2019 2:52:11 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88339091
MARK: TROUBLEMAKERS
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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: Imperial Toy, LLC
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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: 5/6/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
Applicant’s mark is TROUBLEMAKERS, in standard characters, for use on:
Class 28: Toys, games, playthings, and sporting equipment, namely, all of the following: party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; toys, namely, bubble toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; bubble toys, namely, bubble making wand and edible solution sets; water toys; games involving using bubble solution and bubble blowing toys; parlor games; play balls; toy game balls and accessories therefor; toy cannons; toy bouncers, namely, sit-down bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, bounce balls; inflatable pit balls for recreational use; inflatable hopper balls for recreational use, action figure toys, play sets for actions figures; party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; toys, namely, bubble making toys, liquid bubble solution, toys involving bubbles and blowing bubbles; bubble wands; bubble blowing toys; water toys; games involving using bubble solution and bubble blowing toys; play balls; balls used for game play, baseball bats, softball sets, comprising softballs and softball bats, tennis rackets, golf clubs and sets, comprising golf balls and golf clubs and containers therefor; card games; figurines in the nature of modeled plastic toy figurines; molded plastic character toys with connectable and/or interchangeable elements; collectible toy figurines; collectable toy animal figurines; collectible bath toys;children's dress-up fashion accessories in the nature of toy purses, toy shoes, and toy hats; toy action figures; plastic toy characters; collectible plastic toy characters; collectable bendable toy characters; accessories for modeled plastic toy figurines; accessories for toy plastic characters; articles of clothing for toys, namely, outfits for toys; pouches for toys, namely, cases for toy vehicles; puppets; puzzles; packaged amusement and educational games, namely, electronic educational games in the nature of hand-held units for playing educational electronic games; electronic educational game machines; toy environments in the nature of toy environments for use with toy figurines and toy environments for use with toy characters and figurine play pieces, namely, toy buildings, toy vehicles, toy building structures, toy construction sets; play sets for toy figurines, play sets for toy characters; doll costumes, namely, play toy costumes; fantasy character toys; toy action figures and accessories therefor; play toys and accessories for children to imitate a fantasy role, namely, play toy guns, play toy rifles, play toy pistols, play rifle and play pistol sets, play toy gun holsters, play gun and toy holster sets, and toy accessories therefor; inflatable elastomeric toys in the shape of animals, insects, figurines, and creatures, and other recognizable object shapes when not in a stressed or stretched state; and elastomeric balls for play; plush toys, plush stuffed toys, plush dolls and plush covered balls; action skill games; hand-held, non-electronic skill games; tossing disc toys; toy projectiles and accessories therefor; action figures, dolls and figurines, rubber toys in the shape of food and household goods;, toy watches and toy jewelry; toy holiday ornaments of rubber; balls for play, namely, balls for juggling, games, and sports; toy animals; toy insects; inflatable thin rubber toys and rubber-like toys; rubber character toys; toy dice; toy dolls; elastic toys, namely, rubber band toys that assume particular animal, letter and other object shapes when not in a stressed or stretched state; toy guns and toy ammunition, toy dart guns, dart games and darts; toy weaponry, namely, hand weapons in the nature of firearms, cap guns, handheld projectile-launchers, sling-shots, and ammunition for sling-shots; toy guns; toy dart guns; toy currency, toy make-up and toy make-up accessories; dolls; toy coin banks; toy purses and toy jewelry; bath toys; sand toys, toy phones and toy personal digital assistants; fashion toy clothing, toy jewelry, toy make-up and toy make-up accessories, light-up toys for projecting images, bubble toys, namely, bubble making wand and solution sets, ride-on toys; toy purses, toy keychains, toy coins and currency, walkabout toys, namely, wind-up walking toys; toy target shooting sets containing toy weapons and targets sold together as a kit; fitted covers specially adapted for toy cars, airplanes, and boats; role-playing toys in the nature of play sets for children to imitate real life situations and occupations, and role-playing games; toy weapons; toy swords, toy guns and toy darts; toy eyeglasses; bubble making toys and solution therefor, sold separately and as a unit; hanging toy mobiles, toy viewing glasses and pens/markers, all packaged and sold as a unit; diorama playsets for action figures and dolls; dolls and doll accessories; pet toys; pet accessories; pet clothing; pet jewelry; pet beds and furniture; pouches and bags for storing and disposal of pet waste
The registered mark in U.S. Registration No. 5556799 is TROUBLE MAKER, in standard characters, for use on:
Class 28: Backgammon games; Board games; Card games; Checkers games; Chess games; Dart games; Dice games; Equipment sold as a unit for playing board games; Equipment sold as a unit for playing card games; Equipment sold as a unit for playing party games; Memory games; Parlour games; Party games; Tabletop games; Target game
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 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. 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.
Comparing 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).
Since the marks are highly similar in sound, appearance, and connotation, source confusion is likely.
Comparing the Goods
In this case, the goods in the application and registration(s) are identical as to: “card games,” “dart games,” and “parlor games” which is spelled in the British English variant “parlour games” in applicant’s identification of goods. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, these goods are related.
In this case, the registration uses broad wording to describe target games, which presumably encompasses all goods of the type described, including applicant’s more narrow “toy target shooting sets containing toy weapons and targets sold together as a kit.” 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). Thus, these goods of applicant’s and registrant’s are legally identical. 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)).
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.
Since the marks are highly similar and the goods are closely 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. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification of Goods Requirement
Applicant has classified “pet jewelry” and “pet clothing” in International Class 28; however, the proper classification is International Class 14 and 18 respectively. Therefore, applicant may respond by (1) adding International Class 14 and 18 to the application and reclassifying these goods in the proper international class, (2) deleting “pet jewelry” and “pet clothing” from the application, or (3) deleting the remainder of the items in the identification leaving just one entry and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may adopt the following identification, if accurate:
Class 16: plastic bags for pet waste disposal
Class 18: pet clothing; pet accessories, namely, canvas, vinyl and leather pouches for holding disposable bags to place pet waste in
Class 20: pet beds for household pets and pet furniture
Class 21: pet accessories, namely, pet brushes, drinking bowls, feeding dishes
Class 28: Toys, games, playthings, and sporting equipment, namely, party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; bubble wand making and solution toy sets, namely, bubble toy wands, liquid bubble solution, wand toys for bubbles and blowing bubbles, bubble making wands, bubble blowing toy wands; bubble toys, namely, bubble making wand and edible solution sets; water toys; party games involving using bubble solution and bubble blowing toys; parlor games; play balls; toy game balls and accessories therefor, namely, nets and paddles; toy weapon cannons; toy bouncers, namely, inflatable sit-down ride-on toy bouncers, trampoline bounce boards; bouncing toys, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure, inflatable bounce ball toys; inflatable pit balls for recreational use; inflatable hopper balls for recreational use, action figure toys, play sets for actions figures; party favors in the nature of small toys; water squirting toys; inflatable and buoyant bath toys; swimming toys, namely, swimming rings and swim fins; bubble wand making and solution toy sets, namely, bubble making toy wands, liquid bubble solution, wand toys for bubbles and blowing bubbles; bubble wands; bubble blowing toys; water toys; games involving using bubble solution and bubble blowing toys; play balls; balls used for game play, baseball bats, softball sets comprising softballs and softball bats, tennis rackets, golf clubs and sets comprising golf balls and golf clubs and bags therefor; card games; figurines in the nature of modeled plastic toy figurines; molded plastic character toy figurines with connectable and/or interchangeable elements; collectible toy figurines; collectable toy animal figurines; collectible bath toys; children's dress-up fashion accessories in the nature of toy purses, toy shoes, and toy hats; toy action figures; plastic toy characters; collectible plastic toy characters; collectable bendable toy characters; accessories for modeled plastic toy figurines; accessories for toy plastic characters; articles of clothing for toys, namely, outfits for toys; pouches for toys, namely, cases for toy vehicles; puppets; puzzles; packaged amusement and educational games, namely, electronic educational games in the nature of hand-held units for playing educational electronic games; electronic educational game machines for children; toy environments in the nature of toy environments for use with toy figurines and toy environments for use with toy characters and figurine play pieces, namely, toy buildings, toy vehicles, toy building structures, toy construction sets; play sets for toy action figurines, play sets for toy action figure characters; doll costumes, namely, play toy costumes; fantasy character toys; toy action figures and accessories therefor; play toy weapons and accessories for children to imitate a fantasy role, namely, play toy guns, play toy rifles, play toy pistols, play rifle and play pistol sets, play toy gun holsters, play gun and toy holster sets, and toy accessories therefor; inflatable elastomeric toys in the shape of animals, insects, figurines, and creatures, and other recognizable object shapes when not in a stressed or stretched state; and elastomeric balls for play; plush toys, plush stuffed toys, plush dolls and plush covered toy balls; action skill games; hand-held, non-electronic skill games; tossing disc toys; toy projectiles and accessories therefor; action figures, dolls and toy figurines, rubber toys in the shape of food and furniture; toy watches and toy jewelry; toy Christmas tree ornaments of rubber; balls for play, namely, balls for juggling, games, and sports; toy animals; toy insects; inflatable thin rubber toys and rubber-like toys; rubber character toys; toy dice; toy dolls; elastic toys, namely, rubber band character toys that assume particular animal, letter and other object shapes when not in a stressed or stretched state; toy guns and toy ammunition, toy dart guns, dart games and darts; toy weaponry, namely, hand weapons in the nature of firearms, cap guns, handheld projectile-launchers, sling-shots, and ammunition for sling-shots; toy guns; toy dart guns; toy play currency, toy imitation make-up and toy imitation make-up accessories; dolls; toy coin banks; children’s dress up accessories, namely, toy purses and toy jewelry; bath toys; sand toys; role playing toys in the nature of play sets for children to imitate real life occupations, namely, toy phones and toy personal digital assistants; children’s dress-up accessories, namely, fashion toy clothing, toy jewelry, toy make-up and toy make-up accessories; light-up toys for projecting images; bubble toys, namely, bubble making wand and solution sets; ride-on toys; toy purses, toy keychains, toy coins and currency; walkabout toys, namely, wind-up walking toys; toy target shooting sets containing toy weapons and targets sold together as a kit; fitted covers specially adapted for toy cars, airplanes, and boats; role-playing toys in the nature of play sets for children to imitate real life situations and occupations, and role-playing games; toy weapons; toy swords, toy guns and toy darts; children’s dress-up accessories, namely, toy eyeglasses; bubble making toy wands and solution therefor, sold separately and as a unit; hanging toy mobiles, toy viewing glasses, and pens and markers, all packaged and sold as a unit; action figure and doll accessories, namely, diorama playsets for action figures and dolls; dolls and doll accessories; pet toys
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Application Requirements
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response Guidelines
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. 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.
/Elizabeth Shen/
Trademark Examining Attorney
Law Office 121
571-270-7111
elizabeth.shen@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.