United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88464132
Mark: HIDEAWAY
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Correspondence Address:
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Applicant: Platinum Investment Group Pty Ltd
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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: March 18, 2020
This Office action is in response to applicant’s communication filed on 2/24/2020.
In a previous Office action(s) dated 8/31/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d).
In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services and clarify the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: identification and description of the mark requirements. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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
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.
Applicant argues that the marks are not confusingly similar. Such arguments are unpersuasive because the marks are virtually identical under the law.
First, both marks are spelled exactly the same and are identical in sound. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Applicant further argues that the goods are not related.
Applicant cites much case law where the board or courts have found marks to be not confusingly similar. Again, the marks here are HIDEAWAY in stylization and HIDEAWAY in standard characters. Under the law, the marks are treated as identical as detailed above. None of the case law cited by applicant feature virtually identical marks. In fact, all of the cases cited by applicant involve marks that have different wording. As such, the cases cited by applicant are not persuasive. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Further to the evidence of record presented in the 8/31/2019 Office Action showing the relatedness of the goods, the attached evidence from Avon, Borghese, Burt’s Bees, Clarins, and Cleure further establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark and the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and/or 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).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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).
/Esther Queen/
Examining Attorney
LO 111
571-272-6695
Esther.Queen@uspto.gov
RESPONSE GUIDANCE