To: | TAIYO US, CORPORATION (hello@taiyo.us) |
Subject: | U.S. Trademark Application Serial No. 88504565 - TAIYO - N/A |
Sent: | October 04, 2019 02:10:45 PM |
Sent As: | ecom120@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 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88504565
Mark: TAIYO
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Correspondence Address:
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Applicant: TAIYO US, 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: October 04, 2019
Applicant has applied for the mark “TAIYO” in standard characters for use in connection with the following:
International Class 025 Fabric sold as an integral component of finished clothing items, namely, Dresses; Jumpsuits; Shirts; Blouses; Tops; Skirts; Shorts; Pants; Evening Gowns; Bathing Suits; Sweaters; Ties; Wraps; Loungewear; Beachwear; Pajamas; Suits; Coats; Jackets; Shoes; Headwear; Scarves; Underwear; Leotards; Tote Bags; Belts; Lingerie
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
5196071 TAYO THE LITTLE BUS 120 OWNER, ICONIX CO., LTD.
5606035 TAYO TO STAND · TO BUILD · TOGETHER
OWNER, WIPE EVERY TEAR
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
In this case, a likelihood of confusion is present because there are similarities between the compared marks and relatedness of the compared goods.
SIMILARITY OF THE MARKS
The applicant’s and registrant’s respective marks, “TAIYO”, “TAYO THE LITTLE BUS 120”, and “TAYO TO STAND · TO BUILD · TOGETHER”, are similar in appearance, sound, connotation, and commercial impression.
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).
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).
In this instance, the marks “TAIYO”, “TAYO THE LITTLE BUS 120”, and “TAYO TO STAND · TO BUILD · TOGETHER” create the same overall commercial impression because the marks have the same dominant feature. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Here, the wording “TA” and “YO” are dominant features where they appear within the first word of applicant’s and registrants’ mark. Consumers are more likely to focus on the wording “TA” and “YO” across the marks because it is identical wording within the lead term and it has the same syllable structure, which makes the marks similar in appearance, sound, connotation, and commercial impression. Applicant’s use of the letter “I” in its mark for “TAIYO” does not obviate the noted similarities with registrants’ marks for “TAYO THE LITTLE BUS 120” and “TAYO TO STAND · TO BUILD · TOGETHER” because it is a vowel that does not add significance. For example, internet evidence provides that consonants dictate the manner in which surrounding vowels are pronounced in a word. See attached internet evidence from http://www.thoughtco.com/long-and-short-vowel-sounds-1856955. In this case, the consonants “T” and “Y” would cause the vowels in applicant’s mark for “TAIYO” to sound the same as the vowels in registrants’ respective marks that include the word “TAYO”. Taken together, the identical dominant features and use of same consonants in the lead word of applicant’s and registrants’ marks causes them to look the same, be pronounced the same, and connote the same mental impression. The 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).
Further, applicant’s mark appears as a shortened version of registrants’ marks because its dominant features are encompassed in registrants’ marks.
Because the marks are similar in appearance, sound, connotation, and commercial impression, the marks are confusingly similar.
RELATEDNESS OF THE GOODS AND/OR SERVICES
The applicant’s goods are listed below:
[INTERNATIONAL CLASS INTENTIONALLY OMITTED]
Fabric sold as an integral component of finished clothing items, namely, Dresses; Jumpsuits; Shirts; Blouses; Tops; Skirts; Shorts; Pants; Evening Gowns; Bathing Suits; Sweaters; Ties; Wraps; Loungewear; Beachwear; Pajamas; Suits; Coats; Jackets; Shoes; Headwear; Scarves; Underwear; Leotards; Tote Bags; Belts; Lingerie
The registrant’s relevant goods are listed below:
5196071 TAYO THE LITTLE BUS 120
International Class 025 Shoes; boots; sandals; slippers; children's clothing, namely, shirts, pants, belts, gloves, jerseys, skirts, dresses, pajamas, jumpers; infant's clothing, namely, infant sleepers, infant wear, infant's trousers, one piece garment for infants and toddlers; underwear; under pants; swimming suits; pajamas; winter gloves; mufflers; socks, caps; raincoats; belts as clothing
5606035 TAYO TO STAND · TO BUILD · TOGETHER
International Class 014 Jewelry
The applicant’s and registrant’s goods are related and could give rise to the mistaken belief that they emanate from the same source.
In this case, applicant’s and registrants’ goods could give rise to the mistaken belief that they emanate from the same source because they are commonly provided by the same entity. For example, the attached Internet evidence, consisting of third-party providers of clothing and accessories, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are similar or complementary in terms of purpose or function. See attached internet evidence showing that the same entity commonly provides jumpsuits, shirts, blouses, tops, skirts, shorts, pants, evening gowns, bathing suits, sweaters, wraps, loungewear, beachwear, pajamas, suits, coats, jackets, shoes, headwear, scarves, underwear, leotards, tote bags, belts, lingerie, underwear, shoes, boots, jewelry, and fabric sold as an integral component of finished clothing items, namely, dresses:
Thus, applicant’s and registrants’ goods 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).
Upon encountering “TAIYO” used on applicant’s goods and “TAYO THE LITTLE BUS 120” and “TAYO TO STAND · TO BUILD · TOGETHER” used on registrants’ goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration under Section 2(d) of 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. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify the below listed wording in the identification of goods and/or services because the respective identifications are indefinite and/or too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
International Class 025:
Suggested Amendment:
Applicant may substitute the following wording, if accurate (additions in bold):
International Class 018 Tote Bags
International Class 025 Fabric sold as an integral component of finished clothing items, namely, Dresses; Jumpsuits; Shirts; Blouses; Knit Tops; Skirts; Shorts; Pants; Evening Gowns; Bathing Suits; Sweaters; Ties as clothing; Clothing Wraps; Loungewear; Beachwear; Pajamas; Suits; Coats; Jackets; Shoes; Headwear; Scarves; Underwear; Leotards; Belts; Lingerie
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 025. However, applicant needs a specimen for class 018. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE OPTIONS
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.
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
Shari Gadson
/Shari Gadson/
Trademark Examining Attorney
Law Office 120
United States Patent and Trademark Office
571-272-9319
shari.gadson@uspto.govshari.gadson@uspto.gov
RESPONSE GUIDANCE