United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88505169
Mark: CONCORDE
|
|
Correspondence Address: |
|
Applicant: Dreamwell, Ltd.
|
|
Reference/Docket No. SSB0932TUS
Correspondence Email Address: |
|
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 07, 2019
SUMMARY OF THE ISSUE
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant’s mark is CONCORDE (in standard characters) for “Mattresses and box springs” in International Class 20.
The registered marks are the following:
· U.S. Reg. No. 2166834- CONCORDE (in standard characters) for “office furniture, namely, chairs” in International Class 20; and
· U.S. Reg. No. 5649681- CONCORD (plus design) for, in relevant part, “Curtain holders, not of textile material; Curtain hooks; Curtain rails; Curtain rings; Curtain rods; Curtain rods, rollers and hooks; Curtain rollers; Curtain tie-backs in the nature of non-textile curtain holders; Mattress component, namely, elastic gel material located in the top upholstery layer of mattresses sold as an integral component of the mattresses; Mattress cushions; Mattress foundations; Mattress toppers; Mattresses; Mattresses and pillows; Mattresses made of flexible wood; Pillow-like device comprising plastic core, fabric, and cushion material to be worn on arm or leg while sleeping or at rest; Pillows; Pillows for household pets; Tablecloth weights not of metal; Towel dispensers, fixed, not of metal; Towel hooks not of metal; Towel racks; Towel stands; Accent pillows; Air mattresses for use when camping; Air mattresses, not for medical purposes; Air pillows, not for medical purposes; Back-up boards, back-up sheets, back-up panels, entry boards, entry sheets, and entry panels made out of epoxy for use in the operation of drilling holes in printed circuit boards; Back-up boards, back-up sheets, back-up panels, entry boards, entry sheets, and entry panels made out of fiber board for use in the operation of drilling holes in printed circuit boards; Back-up boards, back-up sheets, back-up panels, entry boards, entry sheets, and entry panels made out of wood for use in the operation of drilling holes in printed circuit boards; Bamboo curtains; Bamboo blinds; Bath pillows; Bead curtains for decoration; Bean bag pillows; Bed pillows; Beds, mattresses, pillows and bolsters; Beds, mattresses, pillows and bolsters; Chair mats in the nature of a pillow or seat liner; Comb foundations for beehives; Decorative 3D pillows and cushions; Decorative bead curtains; Drapery hardware, namely, traverse rods, poles, curtain hooks, curtain rods and finials; Feather beds; Feather beds; Floor pillows; Futon mattresses; Futons; Head supporting pillows; Inflatable mattresses for use when camping; Inflatable pillows; Japanese food wrapping sheets of wood (Kyogi); Maternity pillows; Mattresses and pillows; Nap mats; Neck-supporting pillows; Non-metal child safety products, namely, string and cord winders for use on blinds, curtains, drapes, window coverings, and door coverings; Novelty pillows; Nursing pillows; Plastic pillow-like device to be worn on an arm while sleeping or at rest; Plastic mesh cushioning sheets for lining shelves; Shower curtain hooks; Shower curtain rings; Shower curtain rods; Spirit-filled energy pillows; Spring mattresses; Straw mattress; Straw mattresses; Straw plaits; Throw pillows; Wearable travel pillow with a storage compartment” in International Class 20.
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 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. 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
In the present case, applicant’s mark is CONCORDE and the mark in U.S. Reg. No. 2166834 is CONCORDE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
Furthermore, the word portion of the mark in U.S. Reg. No. 5649681, CONCORD, and the applied-for-mark, CONCORDE, are essentially phonetic equivalents and thus sound similar. 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).
The fact that the mark in U.S. Reg. No. 5649681 has design elements will not obviate the similarities between the marks at issue. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Additionally, where the goods of an applicant and registrant are identical or virtually identical, as in the present case between the applicant’s goods and the goods identified in U.S. Reg. No. 5649681, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Based on the foregoing, the marks are confusingly similar.
Relatedness of the Goods
In this case, the goods in the application and in U.S. Reg. No. 5649681 are identical in part, specifically “mattresses.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. 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)).
Further, the application uses broad wording to describe the goods, “mattresses,” which presumably encompasses all goods of the type described, including the more narrowly identified goods in U.S. Reg. No. 5649681, such as the following: Mattresses made of flexible wood, Futon mattresses, Inflatable mattresses for use when camping, Spring mattresses, Straw mattress, and Straw mattresses. 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, applicant’s and registrant’s goods 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)).
Additionally, the above-listed 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.
This evidence establishes that the same entity commonly manufactures/produces/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. 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).
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
If the applicant has any questions or requires assistance in responding to this Office Action, please telephone or email the assigned examining attorney.
/Keyla Gandara/
Trademark Examining Attorney
Law Office 117
Telephone: (571) 272-7164
Email: Keyla.Gandara@USPTO.gov
RESPONSE GUIDANCE