To: | Blind Spot, LLC (cspierer@harrisbeach.com) |
Subject: | U.S. Trademark Application Serial No. 88575192 - IN PLAIN SIGHT - N/A |
Sent: | November 18, 2019 06:18:27 PM |
Sent As: | ecom113@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. 88575192
Mark: IN PLAIN SIGHT
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Correspondence Address: |
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Applicant: Blind Spot, 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: November 18, 2019
TEAS PLUS 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 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 applicants who do not meet these requirements must submit an additional processing fee of $125. 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 applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is IN PLAIN SIGHT for restaurant, bar, and catering services, and the registrant’s mark is IN PLEIN SIGHT for, among other things, painting events.
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 [services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks and similarity of the providers and trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity 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).
Here, the applicant’s standard character mark IN PLAIN SIGHT is confusingly similar to the registrant’s standard character mark IN PLEIN SIGHT.
Specifically, the parties’ marks are comprised of wording that is identical in sound. See http://www.ahdictionary.com/word/search.html?q=rain and http://www.ahdictionary.com/word/search.html?q=rein (showing that the letters –ain and –ein may be pronounced the same). 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).
Additionally, the parties’ marks are virtually identical in appearance, except the applicant substitutes the letter E in PLEIN in the registrant’s mark with the letter A. Moreover, to English-speaking consumers who are unfamiliar with the translation in the registrant’s mark, these consumers are likely to perceive the registrant’s mark as an intentional misspelling or novel spelling of the applicant’s mark. Thus, these consumers are likely to perceive that the marks convey the same commercial impression and meaning, namely, evoking “a place that is easily seen.” http://www.merriam-webster.com/dictionary/in%20plain%20sight.
Accordingly, the marks are confusingly similar.
Relatedness of the Services
Here, the applicant’s restaurant, bar, and catering services are closely related to the registrant’s painting events.
Specifically, the attached evidence establishes that third-parties routinely provide the identified services under the same mark and in the same trade channels. E.g., http://www.facebook.com/pg/mydadsmarket/posts/ (offering restaurants, bars, and painting events under My Dad’s Restaurant & Bar mark); http://www.vintagewinebarbistro.com/all-about/vintage-wine-bar-and-bistro-benefits-of-painting-paint-night-restaurant-in-farmingdale/ (same under Vintage Wine Bar and Bistro mark); http://www.rstavern.com/sip-paint-night (same under River Street Tavern mark).
Accordingly, the services are closely related.
Because the marks are confusingly similar and the services are closely related, consumers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Trademark Act Section 2(d).
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/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@uspto.gov
RESPONSE GUIDANCE