UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88374084
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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: Beike Investment Holdings Limited
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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: 6/23/2019
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s Chinese character design mark in relevant part for “furniture; Casks not made of metal; Looking glasses; Works of art made of wood; Artificial horns; decorations of plastic for foodstuffs; kennels for household pets; Identification bracelets, not of metal, for admission to events; coffins; furniture fittings, not of metal; Mattresses; window fittings, not of metal; split rings, not of metal, for keys; nameplates, not of metal; work benches; Cupboards; office furniture; divans; beds; bookcases; writing desks; wardrobes” in Class 020.
The mark in Registration No. 5401627, owned by Shenzhen Feitin Tech Co., LTD. is “BEIKE” in standard characters for “Bath installations; Bath screens; Bicycle lights; Ceiling lights; Desk lamps; Diving lights; Electric lamps; Electric light bulbs; Electric torches for lighting; Fairy lights for festive decoration; Fitted liners for baths and showers; Flares; Flashlights; Floodlights; Floor lamps; Fluorescent lighting tubes; Gas lamps; Germicidal lamps for purifying air; Incandescent lamps; Incandescent light bulbs; Lamps; LED lamps; LED lighting systems, namely, LED modules, power supplies, and wiring; Light Emitting Diode (LED) plant grow light; Lights for vehicles; Safety lamps for underground use; Searchlights; Theatrical stage lighting apparatus; Ultraviolet ray lamps, not for medical purposes” in Class 011.
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.
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).
Here, the applicant's design mark is confusingly similar to the registrant's standard character mark as discussed further below.
In this case, the application and the attached evidence indicates that the applied for mark has transliterates to “BEIKE.” See attached translation evidence http://bkrs.info/slovo.php?ch=%E8%B4%9D%E5%A3%B3.
Applicant’s mark is in Chinese, which is a common, modern language in the United States. See In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) (Chinese).
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Chinese language is a common, modern language spoken by an appreciable number of consumers in the United States.
The applicant’s mark also includes bent line segment and a curved line below inside a square with rounded corners. However, this addition is insufficient to obviate the similarities between the marks. Specifically, the designs is not so distinctive that consumers are likely to call for the goods and/or services by referencing it. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the wording remains the dominant element of the marks.
Moreover, 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).
For these reasons, when consumers encounter the parties' goods and/or services using marks with these similarities, they are likely to be confused as to the source of the goods and/or services. Therefore, the marks are confusingly similar.
Relatedness of the Goods and/or Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Specifically, the attached evidence shows that third parties routinely offer the same or similar goods offered by both applicant and registrant under the same mark and/or the relevant goods are sold or provided through the same trade channels. See e.g. http://www.ikea.com/us/en/catalog/categories/departments/workspaces/, http://www.ikea.com/us/en/catalog/categories/departments/ikea_kitchens/, and http://www.ikea.com/us/en/catalog/allproducts/department/?itm_campaign=Header&itm_element=Button-DTPullDown&itm_content=AllProducts (offering the same or similar goods offered by both applicant and registrant under the same mark and/or through the same trade channels); http://www.homedepot.com/b/Home-Decor/N-5yc1vZas6p?cm_sp=d-flyout-Decor_and_Furniture&catStyle=ShowProducts&s_tnt=118055:1:0, http://www.homedepot.com/b/Lighting/N-5yc1vZbvn5, and http://www.homedepot.com/b/Furniture-Home-Office-Furniture/N-5yc1vZc7np (offering the same or similar goods offered by both applicant and registrant under the same mark and/or through the same trade channels); http://www.ethanallen.com/en_US/shop-lighting, http://www.ethanallen.com/en_US/shop-furniture-bedroom-mattresses, http://www.ethanallen.com/en_US/shop-furniture-living-room, and http://www.ethanallen.com/en_US/shop-decor-artwork-framed-artwork-sculptural-dimensional (offering the same or similar goods offered by both applicant and registrant under the same mark and/or through the same trade channels); http://www.potterybarn.com/shop/furniture/?Kenshoo=_k_EAIaIQobChMIi-uz-o3_4gIVIYdbCh0D3wAOEAAYAiAAEgI0PvD_BwE_k_&cm_ven=NonBrandSearch&cm_cat=Google&cm_pla=NonBrand_Search_Furniture_Broad_Google&cm_ite=furniture&gclid=EAIaIQobChMIi-uz-o3_4gIVIYdbCh0D3wAOEAAYAiAAEgI0PvD_BwE, http://www.potterybarn.com/shop/furniture/bedroom-collections/?cm_type=gnav, http://www.potterybarn.com/shop/furniture/mattresses/?cm_type=gnav, and http://www.potterybarn.com/shop/furniture/home-office-collections/?cm_type=gnav (offering the same or similar goods offered by both applicant and registrant under the same mark and/or through the same trade channels); and http://www.wayfair.com/furniture/cat/office-furniture-c332627.html (offering the same or similar goods offered by both applicant and registrant under the same mark and/or through the same trade channels). The attached Internet evidence establishes that the same entity commonly produces or provides the relevant goods and/or services and markets the goods and/or services under the same mark and that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Collectively, this evidence demonstrates that the parties' goods are similar in nature and/or regularly travel in the same trade channels under the same mark. For these reasons, consumers are likely to mistakenly conclude that the goods emanate from the same source. Therefore, the goods are closely related.
Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the good. Thus, registration is refused pursuant to Trademark Act Section 2(d).
RESPONSE TO REFUSAL
Although the applicant's mark has been refused registration, the applicant may respond to the refusals by submitting evidence and offering argument against the refusal and in support of registration.
RESPONSE GUIDELINES
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.
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.
/Karen S. Derby/
Karen S. Derby
Examining Attorney
U.S. Patent and Trademark Office
Law Office 123
Karen.Derby@uspto.gov
571.270.7070
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.