To: | TRU Kids Inc. (spitz@blankrome.com) |
Subject: | U.S. Trademark Application Serial No. 88488273 - KOALA BABY - 119590-00109 |
Sent: | September 23, 2019 07:23:49 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88488273
Mark: KOALA BABY
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Correspondence Address: |
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Applicant: TRU Kids Inc.
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Reference/Docket No. 119590-00109
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 23, 2019
Refusal Under Section 2(d) – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2028657, 2232391, and 3462226. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is KOALA BABY (in standard characters) for “baby lotions and oils; sunblock; skincare lotion and oils; body washes; shampoos; conditioners” in International Class 3.
The cited marks and their pertinent information are summarized below.
Reg. No. |
Mark |
Relevant Goods/Services |
Owner |
2028657 |
KOALA-T |
cosmetics, namely, shampoo conditioners, hand lotions and skin moisturizers |
Bob M. Sheron |
2232391 |
KOALA PALS |
hair shampoo |
Melaleuca, Inc. |
3462226 |
KOALA PALS |
Body washes; Hand cleaning preparations |
Melaleuca, Inc. |
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.
Similarity of the Marks
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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
The respective marks, KOALA BABY, KOALA PALS, KOALA PALS, and KOALA-T, are highly similar in appearance, sound and meaning. Both share the common dominant literal element, “KOALA.” The only differences are the additional terms “BABY,” “PALS,” and “-T” in the marks.
In this case, the marks share the same first word, “KOALA.” This fact contributes to the marks having the same commercial impression because consumers are more likely to focus on the word “KOALA” when viewing or hearing the marks.
Here, the addition of the term “BABY” in applicant’s mark, as opposed to the additional terms “PALS” and “-T” in registrants’ marks, does not obviate the overall similarity between the marks. Consumers, when encountering the marks KOALA BABY, KOALA PALS, KOALA PALS, and KOALA-T, are likely to be confused as to the source of the goods at issue, particularly when the goods are used for identical and/or highly related purposes.
Thus, the applied-for mark is confusingly similar to the cited registration because the marks share the identical dominant literal element, which gives the marks the same commercial impression.
Relatedness of the Goods
The applicant’s “baby lotions and oils; sunblock; skincare lotion and oils; body washes; shampoos; conditioners” are closely related to the registrant’s “cosmetics, namely, shampoo conditioners, hand lotions and skin moisturizers,” “hair shampoo,” and “Body washes; Hand cleaning preparations” because the applicant’s description of goods is identical to, or broad enough to encompass some of the registrants’ goods.
With respect to applicant’s and registrant’s “body washes,” these goods are identical. When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the “body washes” in the application and Reg. No. 3462226 are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
In this case, the application use(s) broad wording to describe “shampoos; conditioners; skincare lotions” which presumably encompasses all goods of the type described, including registrants’ more narrow “shampoo conditioners,” “hair shampoo,” and “hand lotion.” 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, these goods in the application and registration 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)). Similarly, registrant’s “skin moisturizers” is broad enough to include applicant’s ““baby lotions and oils; sunblock; skincare lotion and oils,” and are therefore legally identical.
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.
In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective goods are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
ADVISORY: Prior-pending Applications – Mark Not Entitled to Register
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
However, applicant must respond to the following requirements.
In this case, applicant must disclaim “BABY” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Applicant’s goods include “baby lotions and oils” (emphasis added). The attached evidence from American Heritage Dictionary shows this wording refers to “a very young; an infant.” Thus, the wording merely describes applicant’s goods because all of the goods presumably are intended for babies.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BABY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The identification of goods must be amended because some of the wording is indefinite.
The wording “skincare lotion and oils” in the identification of goods is indefinite and must be clarified because the types of lotions and oils provided are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Non-medicated skin care preparations, namely, lotions; skin oils for cosmetic use.”
The wording “conditioners” in the identification of goods is indefinite and must be clarified because the type of conditioner provided is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “hair conditioners.”
To address the issues discussed above, applicant may adopt any or all of the following identification of goods, if accurate. Suggested changes are indicated in bold, strikethrough, and underlined fonts.
International Class 3: baby lotions and oils; sunblock sun-block lotions; skincare lotion and oils Non-medicated skin care
preparations, namely, lotions; skin oils for cosmetic use; body washes; shampoos; hair conditioners.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Responding to this Office Action
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
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/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE