To: | The Martin-Brower Company, L.L.C. (trademarks@bfkn.com) |
Subject: | U.S. Trademark Application Serial No. 88585256 - BLUEPRINT - MBCO-0107 |
Sent: | November 20, 2019 09:38:55 AM |
Sent As: | ecom111@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88585256
Mark: BLUEPRINT
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Correspondence Address: BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG 200 WEST MADISON STREET, SUITE 3900
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Applicant: The Martin-Brower Company, L.L.C.
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Reference/Docket No. MBCO-0107
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 20, 2019
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.
Registration Refused – Likelihood of Confusion – International Class 020
Applicant has applied to register BLUEPRINT for, inter alia, “furniture.”
The registered mark is BLUEPRINT for, inter alia, “furniture not marketed for use in the provision of special event services.”
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 and/or services 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 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.
Comparison of the Marks
In the present case, applicant’s mark is BLUEPRINT and registrant’s mark is BLUEPRING. 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 and the first consideration in the analysis is satisfied.
Comparison of the Goods and Services
In this case, the application uses broad wording to describe “furniture,” which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “Furniture not marketed for use in the provision of special event services.” 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 goods and/or services 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 and/or services are related.
The goods and/or services are closely related and the second consideration in the analysis is satisfied.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).
The marks are highly similar and the goods and/or services closely related. Therefore, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5435794. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Prior Pending Applications
The filing dates of pending U.S. Applications Serial Nos. 88566542, 88555930, 88001400, 88001183, and 87345078 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
Identification of Goods
International Class 003
Applicant may adopt the following wording, if accurate.
Chemical preparations, namely, degreasing and cleaning solvents in International Class 001.
Chemical cleaners directed to the foodservice industry; glass cleaners; all-purpose cleaners; detergent soap; dishwashing detergents in International Class 003.
International Class 005
This wording is acceptable as written.
Disposable sanitary wipes, namely, towels impregnated with antimicrobial treatment; sanitizing preparations for commercial use; disinfectant bathroom cleaners; antibacterial cleaners in International Class 005.
International Class 008
This wording is acceptable as written.
Plastic cutlery, namely, forks, spoons, knives in International Class 008.
International Class 016
Similarly, “platters” “trays” “plastic storage bags” “labels” is indefinite and must be identified with more specificity.
“Paper plates; plastic plates; plastic bowls; paper bowls; plastic platters; paper platters; drinking straws; plastic trays; paper trays; is misclassified. The proper classification appears below.
Applicant may substitute the following wording, if accurate.
Packaging containers comprised of paperboard for food and beverages; paper napkins; plastic wrap; paper towels; paper tissues; paper table cloths; paper place mats; plastic garbage bags; plastic food storage bags for household use; cash register paper rolls; paper restaurant guest checks; paper labels in International Class 016.
Packaging containers comprised of plastic foam for food and beverages in International Class 020.
Paper plates; plastic plates; plastic bowls; paper bowls; plastic serving platters; paper serving platters; drinking straws; plastic serving trays; paper serving trays in International Class 021.
International Class 020
This wording is acceptable as written.
Furniture in International Class 020.
International Class 021
Plastic cups and lids for plastic cups; foam cups and lids for foam cups; plastic beverage stirrers; disposable gloves for general use, namely, latex gloves, poly gloves and vinyl gloves; cleaning pads; janitorial mops; janitorial buckets; janitorial brooms; restaurant supplies, namely, [specify the common commercial names of the goods] in International Class 021.
International Class 024
Applicant must specify either the composition or the purpose of the “textiles.”
Textiles, namely, [specify, e.g., textiles for digital printing; natural and synthetic textiles, namely, cotton, silk, and polyester fabrics] in International Class 024.
International Class 025
This wording is acceptable as written.
Chef hats in International Class 025.
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 Applications
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least nine classes; however, applicant submitted a fee(s) sufficient for only eight class(es). 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.
Questions Regarding Office Action
How to respond. Click to file a response to this nonfinal Office action
/allison holtz/
Allison Holtz
Trademark Examining Attorney
Law Office 111
allison.holtz@uspto.gov (preferred)
571-272-9383
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