To: | Test Rite Products Corp. (lynne@boisineaulaw.com) |
Subject: | U.S. Trademark Application Serial No. 88453882 - HOLA - 000123-0014 |
Sent: | April 10, 2020 03:25:15 PM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88453882
Mark: HOLA
|
|
Correspondence Address:
|
|
Applicant: Test Rite Products Corp.
|
|
Reference/Docket No. 000123-0014
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: April 10, 2020
This Office action is in response to applicant’s communication filed on January 18, 2020.
In a previous Office action dated August 24, 2019, 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 a registered mark. In addition, applicant was required to satisfy the following requirements: amend the identification of goods, translation of the mark.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below. 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
The applicant has applied to register the mark:
HOLA for:
IC 011: Humidifiers for household use; aroma diffusers
IC 020: Bookcases; coffee tables; office desks; ladder-style shelves; corner shelves; end tables; vanity mirrors; LED vanity mirrors including aroma diffusers
IC 021: Cookware, namely, cast iron pots, ceramic pots and pans; saucepans; woks and stir-fry pans; kitchen storage, namely, kitchen utility carts, floating wall shelves; kitchen utensils, namely, spoons, spatulas, tongs, whisks, soup ladles, pasta servers; trash cans
The registered marks are:
HELLO HOME for, in relevant part:
IC 011: Convection ovens; electric cooking pots; electric cooking stoves; electric grills; electric kettles; electric toasters; humidifiers; electric fans; electric heating fans
IC 021: Bowls; chopsticks; disposable gloves for home use; disposable plastic gloves for general use; disposable plastic gloves for use in the food service industry; drying racks for laundry; drying racks for washing; household utensils, namely, strainers; household utensils, namely, steamers; kettles, non-electric; mugs; pans; pot lids; pots; woks; clothes drying racks
HELLO for:
IC 020: office furniture, namely, office seating for an office facility which is sold through an exclusive network of office furniture dealers
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
In the instant case, the following factors are the most relevant: similarity of the marks, relatedness of the goods, and similarity of the trade channels of the goods.
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the instant case, the marks share the equivalent terms HOLA and HELLO. The applicant will please note the attached translation evidence which translates the term HOLA as HELLO in English. http://www.spanishdict.com/translation. The terms, as such, have the same meaning and create the same connotation and overall commercial impression. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The applicant further argues that the applicant owns U.S. Registration No. 5489366 for the mark HOLA GO for services featuring goods similar goods to those in the present application. The applicant also refers to its now cancelled prior U.S. Registration for the mark HOLA and asserts that neither of the prior registered marks were blocked by the cited U.S. Registration No. 3325527 for the mark HELLO. The applicant will please note that the applicant’s prior registration for the mark HELLO GO contains additional, non-descriptive wording that differentiates the marks. Moreover, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Please note that in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration is not for the same mark or goods and has not co-existed for at least five years with the cited registration. Thus applicant’s prior registration does not obviate the Section 2(d) refusal.
Moreover, please note that “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
The examining attorney acknowledges the word HOME in U.S. Registration No. 5552935, however, the term has been disclaimed apart from the registered mark and carries less trademark significance. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applicant further argues that the marks are visually different in their manner of actual use. Please note that the marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The applicant asserts that the doctrine of foreign equivalents does not apply in the instant case because the relevant consumers are not likely to stop and translate the mark and that no evidence has been provided to support that application of the doctrine of foreign equivalents.
Applicant’s mark is HOLA, which is a common, modern language in the United States. See Ricardo Media, Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) (Spanish). Specifically, the evidence from the United States Census Bureau and from the attached articles from the examining attorney’s search in a computerized database shows the large number of U.S. consumers who speak this language.
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 Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States. Specifically, the evidence from the United States Census Bureau and the attached articles from the examining attorney’s search in a computerized database show that Spanish is the second most commonly spoken language in the United States after English. As such, an appreciable number of consumers speak Spanish. The foreign word, HOLA, directly translates to the English word, HELLO. The ordinary American purchasers, namely, those proficient in the Spanish, would likely stop and translate the mark.
UNITED STATES CENSUS BUREAU – see graph excerpt below of Spanish speakers in the United States during a five year period
http://www.census.gov/topics/population/language-use/about.html
INFOPLEASE – “Spanish, of course, is the second most commonly spoken language in the United States—there are more than 37 million native Spanish speakers”
http://www.infoplease.com/urdu-spoken-here
WORLD ATLAS - The Most Spoken Languages In America
http://www.worldatlas.com/articles/the-most-spoken-languages-in-america.html
BOOSTLINGO – “…while Spanish is the second most common in 46 states and the District of Columbia, with 40.5 million speakers as of 2016.”
Lastly, where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
The Goods
In the instant case, the parties have identical humidifiers, pans, pots and woks, and highly related aroma diffusers, cookware, kitchen utensils, office furniture, furniture and shelving such that the goods would be marketed in the same channels of trade.
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
In addition, the applicant argues that the HELLO HOME goods are sold “at the grocery store H MART” and are “are not likely to be confused with the applicant’s goods. Please note that 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)).
The applicant emphasizes that the goods for the HELLO registration are expressly limited to “an exclusive network of office furniture dealers.” Please note that the applicant’s goods 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 registrants’ goods are related.
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).
AIRCARE - humidifiers
http://aircareproducts.com/shop/humidifiers.html
JOSS & MAIN – Cookware & Bakeware, pots, pans, woks
http://www.jossandmain.com/kitchen-tabletop/cat/cookware-bakeware-c1859076.html
OFFICEFURNITURE.COM – home office furniture & sets
http://www.officefurniture.com/Home-Office
OFFICEFURNITURE2GO.COM – home and office - office furniture
Thus, applicant’s and registrants’ 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).
Accordingly, the refusal to register the mark under Section 2(d) of the Trademark Act is repeated and made final.
The following requirement is now made FINAL: Translation. See 37 C.F.R. §2.63(b).
In the Office action dated August 24, 2019, the applicant was required to translate the foreign wording, HOLA, in the applied-for mark. The applicant argues that the wording is an acronym and would not be understood to be a foreign term. Please note, there is nothing on the record to evidence that consumers would understand the term, HOLA, to be an acronym. Moreover, that applicant might use or intend HOLA as a proprietary acronym is not clear from the mark itself. The term, HOLA, is a direct and literal translation of the term, HELLO (see attached http://www.spanishdict.com/translation).
Accordingly, to permit proper examination of the application, applicant must submit an English translation of all wording in the mark because it is foreign wording. 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.
The following English translation is suggested: The English translation of “HOLA” is “HELLO”. TMEP §809.03. See attached translation evidence.
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 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).
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
SPANISH AND SPANISH CREOLE
.Population 5 years and over |
291,484,482 |
Speak only English at home |
231,122,908 |
Speak a language other than English at home |
60,361,574 |
SPANISH AND SPANISH CREOLE |
37,458,624 |
..Spanish |
37,458,470 |
..Ladino |
130 |
RESPONSE GUIDANCE