To: | Digby, Roger (cgannon@carlagannonlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88418546 - SONGBIRD - DIGBY-07 |
Sent: | July 29, 2019 09:15:03 AM |
Sent As: | ecom124@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 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88418546
Mark: SONGBIRD
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Correspondence Address: 8903 E. OAK ISLAND DR., SUITE 9
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Applicant: Digby, Roger
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Reference/Docket No. DIGBY-07
Correspondence Email Address: |
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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: July 29, 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.
ADVISORY - PRIOR-FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5625142; 5650720; 5651695. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is SONGBIRD (in standard character form) for “Online retail store services featuring furniture and accessories, namely, lamps, pillows, bedding, mattresses, clocks, mirrors, cushions, vases, candlesticks and silk flowers” in International Class 35.
Registrants’ marks are the following:
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.
Comparison as to Reg. No. 5625142
In the present case, applicant’s mark is SONGBIRD and registrant’s mark is SONGBIRD. 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 and services. Id.
Therefore, the marks are confusingly similar.
Comparison as to Reg. Nos. 5650720; 5651695
Here, applicant’s and registrant’s marks are similar because they share the identical dominant first term, SONGBIRD.
Applicant’s deletion of “SEVEN” fails to obviate the overall similarity of the marks because, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from that mark.
Further, applicant’s deletion of design elements from Reg. No. 5651695 fails to create a distinct commercial impression because the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. 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)).
Given the shared dominant first term, SONGBIRD, the marks at issue create a similar overall commercial impression which is sufficient for finding a likelihood of confusion.
Relatedness of Goods and Services:
The compared goods and 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).
Comparison as to Reg. No. 5625142
Here, applicant’s online retail store services featuring furniture and accessories, namely, lamps, pillows, bedding, mattresses, clocks, mirrors, cushions, vases, candlesticks and silk flowers and registrant’s alarm clocks are closely related because the same entity commonly provides applicant’s and registrant’s goods and services, under the same mark.
The third-party Internet evidence shows that the applicant’s services and the registrant’s goods are closely related and travel through similar trade channels to the same class of consumers.
Thus, upon encountering registrant’s mark used for alarm clocks and applicant’s mark used for online retail store services featuring furniture and accessories, namely, lamps, pillows, bedding, mattresses, clocks, mirrors, cushions, vases, candlesticks and silk flowers, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.
Comparison as to Reg. Nos. 5650720; 5651695
Here, applicant’s online retail store services featuring furniture and accessories, namely, lamps, pillows, bedding, mattresses, clocks, mirrors, cushions, vases, candlesticks and silk flowers and registrant’s bed linens, curtains, throws, towels, pillow covers and coasters are closely related because the same entity commonly provides applicant’s and registrant’s goods and services, under the same mark.
The attached Internet evidence, consisting of webpage screenshots from West Elm, CB2, Restoration Hardware, Aiden Gray and Serena & Lily, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. In addition, the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Finally, the goods and services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and 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).
The third-party Internet evidence shows that the applicant’s services and the registrant’s goods are closely related and travel through similar trade channels to the same class of consumers.
Thus, upon encountering registrant’s marks used for home goods, namely, bed linens, curtains, throws, towels, pillow covers, coasters of textile and applicant’s mark used for online retail store services featuring furniture and accessories, namely, lamps, pillows, bedding, mattresses, clocks, mirrors, cushions, vases, candlesticks and silk flowers, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.
Given the foregoing, registration is refused 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.
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 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 response to this nonfinal Office action
/Tara L. Bhupathi/
Examining Attorney
Law Office 124
(571) 272-5557
Tara.Bhupathi@uspto.gov
RESPONSE GUIDANCE