To: | Yan haifeng (pz976uahpmd@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88415934 - FUNBELL - N/A |
Sent: | May 06, 2020 09:24:02 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88415934
Mark: FUNBELL
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Correspondence Address: |
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Applicant: Yan haifeng
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 06, 2020
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
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5529806. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
In the present case, applicant’s mark is FUNBELL and registrant’s mark is FUNBELL. 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
The goods 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 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] 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).
In the present case, applicant has applied for the mark for use in connection with:
Class 25: Sock suspenders; Socks; Socks and stockings; Adult novelty gag clothing item, namely, socks; Ankle socks; Anklets; Anti-perspirant socks; Boat socks; Jackets and socks; Japanese style socks (tabi covers); Japanese style socks (tabi); Men's socks; Men's dress socks; Non-slip socks; Paper shoes used when going through metal detectors to keep feet and socks clean; Plastic socks used in the airport environment when going through security to keep feet clean, dry and sanitary; Plastic slippers used in the airport environment when going through security to keep feet and socks clean, dry and sanitary; Slipper socks; Sweat-absorbent socks; Thermal socks; Toe socks; Trouser socks; Water socks; Woollen socks; Yoga socks
Registrant has registered the cited mark for use in connection with:
Class 9: Batteries, electric; Cameras; Chargers for electric batteries; Computers; Data processing equipment, namely, couplers; Earphones; Electric switches; Electric wires; Eyeglasses; Light emitting diodes (LEDs); Portable telephones; Radiotelephony sets; Silicon wafers; Telephone receivers; Telephone sets; Telescopes; Televisions; Theft alarms; Videocameras; Wafers for integrated circuits
The attached internet evidence from Oakley, Polo Ralph Lauren, and Tory Burch shows that the same source that offers eyeglasses like the goods identified by registrant commonly also offers socks, jackets, and other goods like those listed by applicant under the same mark. http://www.asos.com/us/polo-ralph-lauren/polo-ralph-lauren-0ph4145-square-sunglasses/prd/13755306?clr=&colourWayId=16563454&SearchQuery=&cid=19526; http://www.asos.com/us/polo-ralph-lauren/polo-ralph-lauren-baracuda-player-logo-cotton-harrington-jacket-in-tan/prd/14981393?clr=&colourWayId=16662196&SearchQuery=polo%20ralph%20lauren; http://www.toryburch.com/performance-compression-no-show-socks/37098.html; http://www.coastal.com/glasses/tory-burch/tory-burch-ty2031-51?v=blue-brown-tortoise; http://www.coastal.com/glasses/tory-burch; http://www.oakley.com/en-us/category/accessories/accessories/socks; http://www.oakley.com/en-us/category/men/eyeglasses; http://www.framesdirect.com/eyeglasses/polo.
Applicant and registrant’s goods are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's goods are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the goods of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with a registered mark, and registration is properly refused on the Principal Register 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. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
REQUEST FOR INFORMATION REGARDING MARK SIGNIFICANCE
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording “FUNBELL” in the mark has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
(2) Respond to the following questions:
What is the significance of the term FUNBELL in the mark?
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
Examining Attorney
Law Office 105
RESPONSE GUIDANCE