To: | BEANZ ENT LLC (jessica@newleaflegal.com) |
Subject: | U.S. Trademark Application Serial No. 88519908 - BEANZ - N/A |
Sent: | October 03, 2019 10:07:39 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88519908
Mark: BEANZ
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Correspondence Address: |
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Applicant: BEANZ ENT LLC
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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 03, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1348714 and 1368273—which are each owed by L.L. Bean, Inc. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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.
Comparison of Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark BEANZ. Registrant’s marks are BEAN and BEAN’S.
Both applicant and registrant’s marks are one word and consist of the word BEAN, its plural, or its possessive. Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a highly similar commercial impression of a type of seed that is a food item.
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Services
The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared 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). 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 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).
In the present case, applicant has applied for the mark for use in connection with:
Class 35: Online retail clothing, footwear, athletic apparel and accessories store services featuring in-store order pickup; Online retail long-sleeved and short-sleeved t- shirts, jewelry, hats, shoes, sweatshirts, hoodies, pants, bandanas, sweatbands, hair accessories, jackets, socks store services featuring in-store order pickup
Registrant has registered the cited mark for use in connection with:
Class 35: RETAIL STORE SERVICES, AND MAIL ORDER SERVICES DEALING IN CLOTHING, LUGGAGE, HARDWARE, SPORTING GOODS, CAMPING EQUIPMENT, FURNITURE, BICYCLING EQUIPMENT, HOUSEWARES, WATCHES AND CLOCKS, SUNGLASSES, AND PUBLICATIONS
Unrestricted and broad identifications are presumed to encompass all services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Registrant broadly identifies retail store services featuring clothing and sporting goods in a manner that encompasses the services specified by applicant, so the services are essentially identical and related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's services are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the services of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with registered marks, and registration is properly refused on the Principal Register under Section 2(d).
Applicant should note the following potential grounds for refusal.
PRIOR-FILED APPLICATIONS
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.
CLARIFICATION OF IDENTIFICATION OF SERVICES REQUIRED
The wording “accessories” in the identification of services is indefinite because it does not identify the particular type of accessories that are offered in connection with applicant’s retail store services. Applicant should also add a conjunction to the list of goods offered in connection with its retail store services to clarify the identification.
Applicant may substitute the following wording, if accurate (changes indicated in bold and strikethrough):
Class 35: Online retail clothing, footwear, athletic apparel and accessories store services featuring in-store order pickup; Online retail long-sleeved and short-sleeved
t- shirts, jewelry, hats, shoes, sweatshirts, hoodies, pants, bandanas, sweatbands, hair accessories, jackets, and socks store services featuring in-store order pickup
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.
ASSISTANCE
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
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
RESPONSE GUIDANCE