United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88497483
Mark: STUDIO JCP HOME
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Correspondence Address:
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Applicant: J. C. PENNEY PURCHASING CORPORATION
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Reference/Docket No. N/A
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 17, 2019
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4913488. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Comparison 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)); TMEP §1207.01(b).
In the instant case, the applicant’s mark “STUDIO JCP HOME” is highly similar to the registrant’s mark “JCP”. The only difference between the marks is that the applicant added the merely descriptive wording “STUDIO” and “HOME” to the registered mark.
Comparison of the Goods
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. 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).
In this case, the registrant provides “Retail department store services, retail mail order catalog services, and computerized online retail department store services in the fields of cosmetics, jewelry, luggage, handbags, furniture, picture frames, lamps, dinnerware, glassware, wearing apparel and footwear for men, women, and children, bedding, window coverings and window hardware, towels, table linens, rugs, exercise equipment, pet accessories, small electric appliances” in International Class 35. The applicant’s goods are all types of goods typically sold in retail department stores. Specifically, International Class 4 for “Candles”; International Class 8 for “cutlery”; International Class 11 for “Lamps and decorative lanterns”; International Class 14 for “clocks”; International Class 16 for “Framed art and printed art reproductions”; International Class 20 for “Shower curtain hooks and rods; tissue box covers; pillows; decorative pillows; mattress pads and mattress toppers; decorative accessories, mirrors, picture frames, wall art; furniture; blinds, shades, drapery hardware, namely, traverse rods, poles, curtain hooks, curtain rods, finials and brackets”; International Class 21 for “Soap dishes, wastebaskets; toothbrush holders; hampers; decorative baskets; dishes; dinnerware; glassware; food storage and serving utensils”; International Class 24 for “Towels, shower curtains and shower liners; sheets, throws, bedspreads, mattress pads, comforters, coverlets, quilts, bed blankets, duvets, shams, bed skirts; table linens, napkins; curtains, drapes and valances”; and “International Class 27 for “Carpets, rugs, bath mats, and wall hangings”.
See the following attached representative website excerpts from providers of retail department store services:
http://www.belk.com/; and
Furthermore, the applicant’s goods include many of the specific items sold in Registrant’s brick and mortar and online retail stores.
Purchasers of applicant’s goods could mistakenly assume such goods were produced by registrant, or that applicant and registrant are related in some way. Accordingly, since the marks are confusingly similar and the goods are closely related, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Trademark Act.
Ownership of Cited Registration
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 4913488.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Application Not Entitled to Register – One Earlier-filed Pending Application
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 mark in the referenced application. 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.
The applicant must respond to the requirement(s) set forth below.
Application Informalities
Identification of Goods
The identification of goods is unacceptable as indefinite because the goods listed were not specific enough and may be classified in several different International Classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Please note that the goods listed in International Classes 4 and 14 are acceptable as submitted.
Applicant has classified “mattress pads” in International Classes 20 and 24. However, the proper classification is International Class 24 and the applicant must delete the duplicate wording in International Class 20.
Applicant may adopt the following identification, if accurate:
Class 6: “Tissue box covers of metal”;
Class 8: “{Specify, e.g., Table} cutlery; serving utensils, namely, knives”;
Class 11: “Lamps and decorative lanterns {specify, e.g., for lighting}”;
Class 16: “Framed art {specify, e.g., pictures, prints, etchings, etc.} and printed art reproductions; paper napkins”;
Class 20: “Shower curtain hooks and rods; {specify, e.g., plastic, fabric, wood, etc.} tissue box covers; pillows; decorative pillows; mattress toppers; decorative accessories, namely, mirrors, picture frames; {specify, e.g., works of} wall art {made of plaster, wax, wood, plastic}; furniture; {specify, e.g., indoor window treatments, namely,} blinds, shades, drapery hardware, namely, traverse rods, poles, curtain hooks, curtain rods, finials and {non-metal} brackets”;
Class 21: “Soap dishes, wastebaskets; toothbrush holders; {specify, e.g., laundry} hampers {specify, e.g., for domestic or household use}; decorative baskets {specify, e.g., for household purposes}; dishes; dinnerware; {specify, e.g., beverage} glassware; {specify, e.g., insulated containers for} food storage {for domestic use} and serving utensils, {specify, e.g., namely, spoons, fork, ladles, tongs}; ceramic tissue box covers”;
Class 24: “Towels, shower curtains and shower {specify, e.g., curtain} liners; {specify, e.g., bed} sheets, throws, bedspreads, mattress pads, comforters, coverlets, quilts, bed blankets, duvets, shams, bed skirts; table linens, napkins {specify, e.g., of textile}; curtains, drapery and {specify, e.g., fabric} valances”;
Class 27: “Carpets, rugs, bath mats, and {specify, e.g., non-textile} wall hangings”
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
Applicant must disclaim the wording “STUDIO” and “HOME” because it merely describes a variety of home goods and furniture intended for home use designed by a studio. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The word STUDIO is defined as “a place in a company where new products are designed”.
The word HOME is defined as “the place where you live”.
The examining attorney has attached a representative sample of third-party registrations to demonstrate the descriptive nature of the wording “STUDIO” and “HOME” when used in connection with similar goods. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “STUDIO” and “HOME” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Response
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.
How to respond. Click to file a response to this nonfinal Office action
/David Collier/
Examining Attorney
Law Office 109
(571) 272-8859
david.collier@uspto.gov (not for formal responses)
RESPONSE GUIDANCE
