| To: | EUKU LLC (rclarida@reitlerlaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88578816 - CHESTER - 6982-01 |
| Sent: | October 28, 2019 12:47:39 PM |
| Sent As: | ecom104@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88578816
Mark: CHESTER
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Correspondence Address: REITLER KAILAS & ROSENBLATT LLC C/O REITLER KAILAS & ROSENBLATT LLC, 885 |
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Applicant: EUKU LLC
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Reference/Docket No. 6982-01
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 28, 2019
SECTION 2(d) REFUSAL FOR LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4443250, 4887894, and 5736674. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Please note that each registration serves as a partial registration as follows:
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods.” 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)); see TMEP §1207.01.
Comparison 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).
Applicant’s mark is CHESTER.
The mark in registration number 4443250 is CHESTER DWARS.
The mark in registration number 4887894 is CHESTER BED.
The mark in registration number 5736674 is CHESTER BY CHESTER BARRIE.
In this instance, the applicant’s mark is wholly incorporated into the mark of each registrant.
In view of the above, the applicant’s mark is similar and likely to be confusingly or mistakenly attributed to each of the registrants.
Comparison of the Goods
Applicant’s relevant goods are:
Class 18: umbrellas; pet carriers; packing inserts; packing inserts, namely, packing cubes; backpacks; toiletry bags; beach bags; briefcases; handbags; shoulder bags; tote bags; wallets; pouches; card cases; reusable shopping bags; trunks; baby carriers; baby pouch carriers; make up bags; jewelry bags; laundry bags; camera bags; shoe bags for travel
Class 20: pillows; sleeping bags, mats, and pads; garment covers
The goods in registration number 4443250 are:
Class 20: Furniture
The goods in registration number 4887894 are:
Class 20: Mattress foundations
The goods in registration number 5736674 are:
Class 18: Goods made of leather and imitations of leather, namely, bags, cases, briefcase-type portfolios, duffle and tote bags, sports bags, brief cases, attaché cases, boxes, shoulder belts; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery; leather accessories, namely, wallets, key cases, purses, bags for toiletry kits, billfolds, laces, luggage labels; credit card holders, business card holders in the nature of card cases; parts and fittings especially adapted for all the aforesaid goods
Regarding registrations 4443250 and 4887894, the goods of the parties are closely related. As the attached evidence shows, those who provide pillows and or sleeping pads often provide furniture in the form of mattress foundations. For example:
· http://purple.com/mattresses
· http://purple.com/powerbase/buy
· http://www.ikea.com/us/en/cat/beds-mattresses-bm001/
This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Further, it shows that 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. Finally, it shows that 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).
Regarding registrations 5736674, the goods of the parties are identical in part and otherwise closely related. Specifically, both parties provide umbrellas, various bags, and trunks with the remaining goods being closely related. As the attached evidence shows, bags and leather goods often provide a wide variety of these goods. For example:
This evidence also establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Further, it shows that 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. Finally, it shows that the goods are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s 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).
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
The compared goods 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 goods] 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).
The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In view of the above, registration is refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATION
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 mark in the referenced application. 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.
While applicant need not respond to the potential refusal, applicant must respond to the 2(d) refusals and following requirements.
CLASSIFICATION AND IDENTIFICATION OF GOODS
Applicant has classified “camera bags” in International Class 18; however, the proper classification is International Class 9. Therefore, applicant may respond by (1) adding International Class 22 to the application and reclassifying these goods in the proper international class, (2) deleting “camera bags” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant has classified “sleeping bags” in International Class 20; however, the proper classification is International Class 24. Therefore, applicant may respond by (1) adding International Class 22 to the application and reclassifying these goods in the proper international class, (2) deleting “sleeping bags” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant has classified “air fragrancing apparatus” in International Class 21; however, the proper classification is International Class 11. Therefore, applicant may respond by (1) adding International Class 22 to the application and reclassifying these goods in the proper international class, (2) deleting “air fragrancing apparatus” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant has classified “baby changing pads” in International Class 21; however, the proper classification is International Class 20. Therefore, applicant may respond by (1) adding International Class 22 to the application and reclassifying these goods in the proper international class, (2) deleting “baby changing pads” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Additionally, certain additional wording in the identification of goods is indefinite and must be clarified. See TMEP §1402.01. Specifically, please see the underlined wording below and the proposed wording and/or comments that follow in brackets.
Applicant may substitute the following wording, if accurate:
Class 3: Non-medicated skin care preparations; cosmetic preparations; hair removal and shaving preparations; toiletries and hygiene preparations [specify toiletries and preparations; may amend to, e.g., “Non-medicated toiletry preparations; Breath freshening preparations for personal hygiene”]; hair preparations and treatments [clarify nature of preparations and treatments; may amend to, e.g., “hair care preparations; non-medicated hair treatment preparations for cosmetic purposes”]; non-medicated bath preparations; body cleaning and beauty care products [specify products; may amend to, e.g., “body cleaning and beauty care products, namely, _____ {e.g., cosmetics}”]; make-up; eyebrow cosmetics; eyelash cosmetics; make-up preparations; nail polish; nail preparations [clarify nature of preparations; may amend to, e.g., “nail care preparations”]; deodorizers for pets
Class 5: dietary and nutritional supplements, protein supplements, vitamin supplements, mineral supplements, herbal supplements; protein supplement shakes, nutritional supplement shakes; sanitizing wipes, hand-sanitizing preparations; air deodorizers; air purifying preparations; absorbent articles for personal hygiene, namely, sanitary towels, sanitary napkins, and tampons; hygiene preparations and articles [specify preparations and articles; may amend to, e.g., “hygiene preparations and articles, namely, _____ {e.g., medicated toothpaste}”]; personal lubricants
Class 9: Camera bags
Class 11: Air purifiers; dispensing units for room fragrances
Class 18: umbrellas; pet carriers; packing inserts [specify nature of inserts; no suggestion available]; packing inserts, namely, packing cubes; backpacks; toiletry bags [specify contents; may amend to, e.g., “toiletry bags sold empty”]; beach bags; briefcases; handbags; shoulder bags; tote bags; wallets; pouches [specify nature of pouches; may amend to, e.g., “pouches of textile”]; card cases [specify nature of cards; may amend to, e.g., “business card cases”]; reusable shopping bags; trunks [specify nature of trunks; may amend to, e.g., “travelling trunks”]; baby carriers [clarify nature of the goods; may amend to, e.g., “baby carriers worn on the body”]; baby pouch carriers; make up bags [specify contents; may amend to, e.g., “make up bags sold empty”]; jewelry bags [clarify nature of goods and specify contents; may amend to, e.g., “unfitted jewelry bags sold empty”]; shoe bags for travel
Class 20: pillows; sleeping mats and pads; garment covers [clarify nature of goods; garment bags for travel are in class 18 and garment bags for storage are in class 22; no suggestion available]
Class 21: water bottles sold empty; coffee mugs; flasks; glasses, drinking vessels and barware [specify type of glasses and bareware; may amend to, e.g., “drining glasses; drinking vessels; barware, namely, _____ {e.g., seltzer bottles}”]; tableware [specify tableware; may amend to, e.g., “tableware, namely, knives, forks, and spoons}”]; cookware [specify cookware; may amend to, e.g., “cookware, namely, pots and pans”]; household containers
Class 22: Laundry bags; baby changing pads
Class 24: Sleeping bags
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
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 REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least nine classes; however, applicant submitted a fee sufficient for only five classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Christopher M. Nunley/
Examining Attorney
Law Office 104
(571) 270-3782
Christopher.Nunley@uspto.gov
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
RESPONSE GUIDANCE
