To: | Steven Reeves (egginklaw@aol.com) |
Subject: | U.S. Trademark Application Serial No. 88439635 - BROWNIES - SR-TM-190521 |
Sent: | March 12, 2020 11:22:08 AM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88439635
Mark: BROWNIES
|
|
Correspondence Address: |
|
Applicant: Steven Reeves
|
|
Reference/Docket No. SR-TM-190521
Correspondence Email Address: |
|
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: March 12, 2020
This Office action is in response to applicant’s communication filed on February 11, 2020.
In a previous Office action dated August 12, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks. In addition, applicant was required to satisfy the following requirements: attorney bar information and attestation required.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: attorney bar information and attestation. See TMEP §§713.02, 714.04. The refusal to register on the basis of Section 2(d) for likelihood of confusion with the mark in U.S. Reg. No. 4547511 has been withdrawn.
Further, the trademark examining attorney maintains and now makes FINAL the refusal to register under Trademark Act Section 2(d) for likelihood of confusion with the mark in U.S. Reg. No. 1435516. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
· Section 2(d) Refusal – Likelihood of Confusion with a Registered Mark
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH A REGISTERED MARK
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.
Summary of the Marks
Applicant has applied to register the mark BROWNIES in standard characters for use in connection with “wearable garments and clothing, namely, novelty sports jersey shirts having a formal front appearance and a sports jersey back appearance so that the wearer of the shirt when viewed from the front appears dressed in a formal shirt and when viewed from the back appears dressed in a sports jersey” in International Class 25.
The registered mark is BROWNIE in standard character for use in connection, in relevant part, with “sweaters, shirts, blouses, tee-shirts, ties, jumpers, shorts, slacks, nightshirts, tights, socks, sock flashes, sweatshirts, sweatpants, scarves, hats, headbands, sweatbands and visors” in International Class 25.
Similarity of the Marks
Applicant argues in its response dated February 11, 2020 that applicant’s mark “looks and sounds different…because applicant’s mark has an S at the end of the word BROWNIE.” See Response to Office action dated February 11, 2020, page 5. The trademark examining attorney respectfully disagrees for the reasons set forth above. The plural version of a word is virtually identical to the singular form of a word.
Therefore, for the reasons discussed above, the applied-for mark is confusingly similar to the registered mark.
Relatedness of the 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).
In this case, the registration uses broad wording to describe “shirts”, which presumably encompasses all goods of the type described, including applicant’s more narrow “wearable garments and clothing, namely, novelty sports jersey shirts having a formal front appearance and a sports jersey back appearance so that the wearer of the shirt when viewed from the front appears dressed in a formal shirt and when viewed from the back appears dressed in a sports jersey”. That is, applicant’s goods are merely a type of shirts, which are encompassed by the registrant’s broadly identified shirts. 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 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.
Applicant argues in its response that “the origin of these goods are not likely to be confused because of the established Girl Scouts trade channels and the careful purchasing of the respective buyers”. See Response to Office action dated February 11, 2020, page 4. The trademark examining attorney respectfully disagrees and notes that the goods listed in the registration have no restrictions as to nature, type, channels of trade, or classes of purchasers. The goods listed in the registration are not limited to certain consumers or trade channels merely because of the identity of the registrant.
Therefore, for the reasons discussed above, the applicant’s goods are related to the registrant’s goods.
Weakness of the Cited Registration
In its response dated February 11, 2020, applicant has submitted lists of third-party registrations for marks containing the wording BROWNIE or BROWNIES to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. See Exhibit A, Response to Office action dated February 11, 2020.
In this instance, applicant has submitted unacceptable search reports obtained from the USPTO’s Trademark Electronic Search System. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
However, even if these registrations were properly made of record, they do not support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. Applicant identified 568 instances of the wording BROWNIE or BROWNIES in all classes of goods and services. See Response to Office action dated February 11, 2020, page 7. These 568 instances appear to include cancelled or expired registrations, in addition to pending applications.
Because these 568 instances include goods and services in all classes, these registrations appear to be for goods and/or services that are predominantly different from or unrelated to those identified in applicant’s application. Evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording BROWNIE (in plural or singular form) is weak or diluted.
In addition, of the 22 marks that applicant identified as using this wording specifically in International Class 25, only four marks are currently live registrations on the Principal Register; 16 instances are applications that failed to mature to registration or registrations that have been cancelled or expired. See Response to Office action dated February 11, 2020, page 7. The remaining two applications were filed after the filing date of the instant application and are thus irrelevant.
Thus, these third-party registrations have little, if any, probative value with respect to the registrability of applicant’s mark.
Furthermore, the weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case in which there are four registrations in International Class 25 owned by three registrants, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations that applicant has attempted to submit as evidence are insufficient to establish that the wording BROWNIE (in plural or singular form) is weak or diluted.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Therefore, because the marks are confusingly similar and the goods are related, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
This refusal is hereby made FINAL.
HOW TO RESPOND TO THIS OFFICE ACTION
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).
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.
/Hannah Gilbert/
Trademark Examining Attorney
Law Office 121
(571) 272-5029
hannah.gilbert@uspto.gov
RESPONSE GUIDANCE