Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

Issue date:  March 25, 2020

 

This letter confirms applicant’s response filed March 5, 2020.  Counsel’s bar membership information has been noted and made of record.

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 88428781 and 88432681

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

 

 

 

Outstanding Refusal and Potential Refusal – Likelihood of Confusion

A.  Comparison of Marks

As noted in the Office Action issued September 19, 2019, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).

Applicant argues that the stated refusal is unwarranted because “[t]he Trademark Office has recognized that the cited mark is weak”.  In support of this portion, applicant submitted printed or electronic copies of third-party registrations for marks containing the word “CHLOE” 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. 

Specifically, applicant attached printouts of six registrations showing the marks CHLOE AURELIA, CHLOE KRISTYN, CHLOE + ISABEL, BELLA & CHLOE, MAX & CHLOE and CHLOE registered for retail store and vending machine services.  However, these marks are readily distinguishable from the marks at issue and render completely different commercial impressions.  Moreover, the vending machine services associated with the registered mark CHLOE are vastly different from the goods and services of the parties.

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 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).  However, evidence comprising only a small number of third-party registrations for allegedly similar marks with similar services, as in the present case, is 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 submitted by applicant are insufficient to establish that the word CHLOE is weak or diluted. 

Applicant also submitted printouts of three registrations showing the marks CHLOE, CHLOE and CHLOE and design registered with “wine”, “razors”, “shaving blades”, “lamps” and “fireplace screens”.  However, these goods differ significantly from the goods and services of the parties.  Evidence comprising third-party registrations for similar marks with different or unrelated goods, 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 word CHLOE is weak or diluted.

In addition, even if applicant can show that the cited mark is “weak,” the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods.  TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). 

Next, applicant contends that the stated potential refusal should be withdrawn “since the marks in the referenced [applications] are clearly distinct from [its] mark.”  However, all three marks share the common term “CHLOE”.  Marks are 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).

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).

Furthermore, 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).  In this case, consumers will undoubtedly retain a similar recollection of the marks, namely, CHLOE, CHLOE’S CREATIVE CARDS and STAMPS BY CHLOE hair accessories, braids, buttons, haberdashery ribbons and bows and lace, braid and embroidery. 

For the reasons set forth above, and inasmuch as the marks share the identical term CHLOE and would at the very least engender similar meanings as well as commercial impressions, source confusion is likely. 

B.  Comparison of Goods and Services

Applicant contends that the goods and services of the parties are unrelated because “‘hair accessories’ would normally be described as ‘hair accessories’, not ‘personal ornaments’.”  However, applicant provided no evidence to support its speculative position, and “[a]ttorney argument is no substitute for evidence.” Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)(quoting Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)).  Notwithstanding this observation, applicant’s “hair accessories” could most certainly be described and considered “ornamental hair accessories” and “hair ornaments”, as noted by the attached printout from the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

The compared goods and 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).  Rather, 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). 

Furthermore, the fact that the goods and services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods and services, but likelihood of confusion as to the source or sponsorship of those goods and services.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. 

In addition, the question of likelihood of confusion is determined based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).  

In this case, applicant’s goods are identified as follows:   

“Hair accessories, namely, hair bands, hair barrettes, hair clips, hair ribbons, and ponytail holders”, in International Class 26. 

Registrant’s services are identified, in relevant part, as follows:   

“Retail store services in the field of . . . personal ornaments . . . provided via the Internet and other computer and electronic communications networks”, in International Class 35. 

Absent restrictions in an application and/or registration, the identified goods and 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

In this case, contrary to applicant’s position, the identifications set forth in the application and registration have no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these goods and services travel in all normal channels of trade and are available to the same class of purchasers.

Further, as noted in the previous letter, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described including hair accessories, namely, hair bands, hair barrettes, hair clips, hair ribbons and ponytail holders sold by and through on-line retail stores, which are undeniably commercially-related to the registrant’s services.

Similarly, the registration uses broad wording to describe the services and this wording is presumed to encompass all goods of the type described including retail store services in the field of personal ornaments, namely, hair bands, hair barrettes, hair clips, hair ribbons and ponytail holders, provided via the Internet and other computer and electronic communications networks, which are related to the applicant’s goods.  Applicant does not contest these points.

In this regard, applicant’s attention was previously directed to sample dictionary definitions showing the word “Ornament” means “something that lends grace, beauty, or festivity”, “a small, fancy object that is put on something else to make it more attractive” and/or “something that adds beauty”.  In addition, the word “Barrette” means “a decorative clip or bar that is used to hold a girl's or woman's hair in place”.  [Emphasis added].  Here again, applicant does not dispute this evidence.

For purposes of evaluating a trademark, material obtained from the Internet is accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

In further support of the stated refusal, the examiner previously attached twenty third-party registrations showing the same marks registered with hair bands, hair barrettes, hair clips, hair ribbons, ponytail holders and retail store services featuring the same.  This evidence shows that the goods and services of the parties are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel& Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).  At the risk of sounding redundant, applicant does not dispute this point.  To supplement the record, the examiner hereby attaches fourteen third-party registrations showing the relationship between hair bands, hair barrettes, hair clips, hair ribbons and/or ponytail holders and braids, buttons, haberdashery ribbons and bows and lace, braid and/or embroidery.

The use of similar marks on or in connection with both products and retail-store services is likely to cause confusion.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

What’s more, where the marks of the respective parties are identical and highly similar, the relationship between the relevant goods and services need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant and prior applicant 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 and prior applicant. 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, 1025 (Fed. Cir. 1988).

Based on the foregoing remarks, because confusion as to source is likely, the refusal and potential refusal to register under Trademark Act Section 2(d) based on a likelihood of confusion with the registered mark CHLOE and prior-filed marks CHLOE’S CREATIVE CARDS and STAMPS BY CHLOE is maintained and continued.

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 25, 2020 for

U.S. Trademark Application Serial No. 88492266

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”