To: | Charles, Christy Michelle (christy@covena.co) |
Subject: | U.S. Trademark Application Serial No. 88425986 - SIDEKICK - N/A |
Sent: | April 05, 2020 07:27:05 PM |
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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88425986
Mark: SIDEKICK
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Correspondence Address:
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Applicant: Charles, Christy Michelle
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Reference/Docket No. N/A
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: April 05, 2020
In a previous Office action dated August 28, 2019, the trademark examining attorney refused registration of the applied-for mark under Section 2(d) of the Trademark Act.
This Office action is in response to applicant’s communication filed on January 25, 2020.
The trademark examining attorney has considered the applicant’s arguments against the Section 2(d) refusal and has found them unpersuasive. Therefore, for the reasons set forth below, the examining attorney maintains and now makes FINAL the Section 2(d) refusal. See 37 C.F.R. §2.64(a); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Refusal of registration of the applied-for mark is hereby made FINAL because of a likelihood of confusion with the mark in U.S. Registration No. 4584911. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is SIDEKICK, in standard characters, for goods identified as “Personal dispensers for single-serve beverage containers for domestic use.”
Registrant’s mark is SIDEKICK, in standard characters, for relevant goods identified as “Containers for household or kitchen use excluding shot glasses and other beverage containers.”
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 of the Marks
In the present case, applicant’s mark is SIDEKICK, in standard characters, and registrant’s mark is SIDEKICK, in standard characters. 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/or services. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Here, applicant’s goods are similar to registrant’s goods because both are types of containers used in households and kitchens.
Determining likelihood of confusion is based on the description of the goods and/or services 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)).
Applicant’s goods are identified as “Personal dispensers for single-serve beverage containers for domestic use.” The attached dictionary evidence demonstrates that a dispenser may be a type of container that dispenses things.
In this case, the registration uses broad wording to describe “Containers for household or kitchen use excluding shot glasses and other beverage containers” which presumably encompasses types of kitchen containers, including applicant’s more narrow “Personal dispensers for single-serve beverage containers for domestic use.” 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, applicant’s and registrant’s goods 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 and/or 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)). Thus, applicant’s and registrant’s goods and/or services are related.
To the extent that the goods may be distinguished and not encompassing, the attached Internet evidence, consisting of screenshots from Walmart (featuring Southern Home), Mind Reader, Prepara, Neespresso and Keurig, establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods 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).
Specifically, the evidence demonstrates that dispensers of beverage pods commonly produce other household and kitchen containers under the same mark and through the same trade channels.
Thus, a consumer familiar with registrant’s mark used on registrant’s goods, upon encountering applicant’s mark used on applicant’s goods, would likely be confused and mistakenly believe that the goods emanate from a common source. Therefore, registration is refused under Section 2(d) of the Trademark Act.
In light of the above, the refusal based on Section 2(d) of the Trademark Act is hereby continued and made Final.
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).
/Chris Reams/
Chris Reams
Examining Attorney
Law Office 124
571-272-7815
Christopher.reams@uspto.gov
RESPONSE GUIDANCE