To: | Zheng, Ying (Ipspeedygo@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88544124 - COSYROOM - TN19228USTM |
Sent: | February 14, 2020 03:40:09 PM |
Sent As: | ecom109@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 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88544124
Mark: COSYROOM
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Correspondence Address: Ipspeedy Consulting Company, LLC
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Applicant: Zheng, Ying
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Reference/Docket No. TN19228USTM
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: February 14, 2020
This Office action is in response to applicant’s communication filed on January 18, 2020.
This Office action is supplemental to and supersedes the previous Office action issued on September 11, 2019, in connection with this application. The assigned trademark examining attorney inadvertently failed to include all of the applicant’s relevant goods in the Trademark Act Section 2(d) refusal in the previous Office action. See TMEP §§706, 711.02. In other words, the previously cited registration is grounds for refusing registration for additional goods listed in applicant’s identification of goods.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
The issue(s) raised in the previous September 11, 2019 Office action is/are as follow: the Section 2(d) likelihood of confusion refusal and the requirement for domestic counsel. The issue relating to domestic counsel has been satisfied.
Thus, the following is a SUMMARY OF ISSUES that applicant must address:
• Section 2(d) Refusal – Likelihood of Confusion – Partial
Applicant must respond to all issues raised in this Office action and in the September 11, 2019 Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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.
Summary of the Marks
Of note, the wording “picture frames” was also refused in the previous Office action but was not deleted from the identification of goods.
The applied-for mark is COSYROOM in standard characters for the following refused goods: “Clothes hangers; Coat racks; Cushions; Jewelry organizer displays; Picture frames; Seat cushions; Shoe Racks; Slumber bags; Sofas; Storage racks” in International Class 20.
U.S. Registration No. 5695079 is COZYROOM in stylized characters for “Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Belts; Blazers; Boots; Caps being headwear; Coats; Dresses; Flip flops; Gloves; Graphic T-shirts; Hats; Jackets; Jeans; Leggings; Neckwear; Pants; Pullovers; Sandals; Scarves; Shawls; Shirts; Shoes; Shorts; Skirts; Sneakers; Socks; Stockings; Suits; Suspenders; Sweaters; Sweatshirts; T-shirts; Vests; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments” in International Class 25.
Similarity of the Marks
The marks are similar for the same reasons stated in the previous Office action, which are repeated below.
Further, the wording in the marks is identical other than one letter, making the marks similar in appearance. The stylization in the registered mark does not obviate this similarity because the applied-for mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Finally, the marks are similar in commercial impression because the words “COZY” (as spelled in the registered mark) and “COSY” (as used in the applied-for mark) are merely alternate spellings of the same word, as shown by the previously attached evidence, linked below. Thus, the wording in the marks have identical meaning, making the marks similar in commercial impression.
Cambridge Dictionary: http://dictionary.cambridge.org/dictionary/essential-british-english/cosy
Grammarist: http://grammarist.com/spelling/cosy-cozy/
For those reasons, the marks are confusingly similar.
Similarity of the Goods
Ralph Lauren: http://www.ralphlauren.com/search?q=frame&lang=en_US; http://www.ralphlauren.com/men?webcat=men; http://www.ralphlauren.com/home-decor-decorative-accessories/jacqueline-jewelry-box/0036818276.html;
Anthropologie: http://www.anthropologie.com/search?q=frame; http://www.anthropologie.com/?ref=logo; http://www.anthropologie.com/jewelry-boxes-stands; http://www.anthropologie.com/search?q=cushion; http://www.anthropologie.com/shop/brooke-boot-tray?category=SEARCHRESULTS&color=070; http://www.anthropologie.com/search?q=hanger; http://www.anthropologie.com/storage-hardware-entryway; http://www.anthropologie.com/shop/provincial-basket-storage-rack?color=014&q=Provincial%20Basket%20Storage%20Rack&quantity=1&size=One%20Size&type=STANDARD; http://www.anthropologie.com/sofas-settees-sectionals
Tommy Bahama: http://www.tommybahama.com/; http://www.tommybahama.com/en/5%22x7%22-Silk-Abaca-Frame/p/TH312367-042
Urban Outfitters: http://www.urbanoutfitters.com/jewelry-organizers; http://www.urbanoutfitters.com/search?q=cushion; http://www.urbanoutfitters.com/search?q=shoe+rack; http://www.urbanoutfitters.com/mens-clothing; http://www.urbanoutfitters.com/search?q=storage+rack; http://www.urbanoutfitters.com/shop/devon-coat-rack?color=010&q=Devon%20Coat%20Rack&quantity=1&size=ONE%20SIZE&type=REGULAR; http://www.urbanoutfitters.com/search?q=sofa
H&M: http://www2.hm.com/en_us/productpage.0794861001.html; http://www2.hm.com/en_us/productpage.0680065002.html; http://www2.hm.com/en_us/productpage.0629223002.html; http://www2.hm.com/en_us/women.html; http://www2.hm.com/en_us/productpage.0650848002.html
Marmot: http://www.rei.com/b/marmot/c/sleeping-bags-and-accessories?ir=category%3Asleeping-bags-and-accessories&r=c%3Bb; http://www.rei.com/search?q=marmot
REI Co-op: http://www.rei.com/b/marmot/c/sleeping-bags-and-accessories?ir=category%3Asleeping-bags-and-accessories&r=c%3Bb; http://www.rei.com/b/rei-co-op/c/mens-clothing?ir=category%3Amens-clothing&r=c%3Bb
Mammut: http://www.rei.com/b/mammut/c/sleeping-bags-and-accessories?ir=category%3Asleeping-bags-and-accessories&r=c%3Bb; http://www.rei.com/b/mammut/c/mens-clothing?ir=category%3Amens-clothing&r=c%3Bb
Conclusion
For the reasons above, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5695079.
HOW TO RESPOND
Response guidelines. 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.
If applicant does not timely respond to this Office action, the following goods will be deleted from the application:
International Class 20: Clothes hangers; Coat racks; Cushions; Jewelry organizer displays; Picture frames; Seat cushions; Shoe Racks; Slumber bags; Sofas; Storage racks.
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following goods only:
International Class 20: Computer furniture; Crate covers for pets; Display stands; Hand-operated, non-metal retractable reels for hanging signs, pictures and mobiles; Kennels for household pets; Office tables; Pet crates; Pet cushions; Portable beds for pets; Shoe cabinets; Television stands.
See TMEP §718.02(a).
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 Ratcliffe/
Examining Attorney
Law Office 109
Phone: (571) 272-5257
Fax: (571) 273-5562
robert.ratcliffe@uspto.gov
RESPONSE GUIDANCE