To: | Fleetwood Homes, Inc. (uspt@polsinelli.com) |
Subject: | U.S. Trademark Application Serial No. 88454574 - WELCOME HOME - 081644626469 |
Sent: | February 25, 2020 08:54:32 PM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88454574
Mark: WELCOME HOME
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Correspondence Address: ONE EAST WASHINGTON, SUITE 1200
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Applicant: Fleetwood Homes, Inc.
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Reference/Docket No. 081644626469
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: February 25, 2020
This Office action responds to applicant’s communication dated February 24, 2020, where applicant:
(1) Submitted a response to the Trademark Act Section 2(d) refusal.
The examining attorney has reviewed applicant’s response and determined the following:
(1) Applicant failed to assert any argument against the Section 2(d) refusal. Thus, the refusal is now made FINAL.
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
Applicant’s applied-for mark is WELCOME HOME, in Class 37, for Residential building construction services namely, construction of manufactured housing.
The mark in Registration No. 2814289, is WELCOME HOME, in Class 37, for residential construction.
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 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.
Similarity of the Marks
In the present case, applicant’s mark is WELCOME HOME and registrant’s mark is WELCOME HOME. 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 services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Services
In this case, the registration uses broad wording to describe the relevant services, namely, residential construction, which presumably encompasses all services of the type described, including applicant’s more narrow services, namely, residential building construction services namely, construction of manufactured housing. 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 services 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)).
Applicant’s Arguments
Applicant asserts no argument. Given the facts of this case, any argument would certainly be without merit. The marks are identical and the services are encompassing and thus legally identical.
To the extent that applicant would have argued that the services of applicant and registrant are not confusingly similar because the trade channels for the respective services are distinct, this argument is without merit. Neither the application nor registration limits or narrow the relevant trade channels. Absent restrictions in an application or registration, the identified services 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 impermissibly reads limitations into the scope of the application and registration that are not present therein.
To the extent that applicant would have argued that there is no evidence of actual confusion between the relevant marks, this argument is without merit. “‘[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).
For the foregoing reasons, the marks are confusingly similar and the evidence shows that the services are commercially related and likely to be encountered together in the marketplace by consumers. As a result, consumers are likely to be confused and mistakenly believe that the services originate from a common source. Therefore, the Section 2(d) refusal is now 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).
/Jesse Nelman/
Jesse Nelman
Examining Attorney
Law Office 113
(571) 272-0191
jesse.nelman@uspto.gov
RESPONSE GUIDANCE