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. 88631419
Mark: DEVIL FACE
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Correspondence Address: 4500 9TH AVE NE, SUITE 300, SEATTLE
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Applicant: YONGYI, ZHOU
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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: December 29, 2019
Applicant filed this application on September 25, 2019, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2012), based on its allegation of a bona fide intention to use the mark “DEVIL FACE” & design, to identify the source of various goods in International Class 25.
Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject mark of U.S. Registration No. 5451235, issued on April 24, 2018, attached hereto. Id. § 1052(d); see TMEP § 1207.01.
The cited registered mark is “DEVILFACE,” used to indicate the source of various goods, including Carnival masks, Paper party hats, Theatrical masks, Toy masks and Toy and novelty face masks.”
Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services. 15 U.S.C. § 1052(d); see TMEP § 1207.01. In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark. 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor. In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010). In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely. See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.
For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety. Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014).
Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, “but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.” In re Davia, 110 U.S.P.Q.2d 1810, 1813 (TTAB 2014). Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks. See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b).
“[I]t has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate a likelihood of confusion.” RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980); see TMEP § 1207.01(b). “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.” In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007). The Board has held this “especially true” where the application and registration are for goods and services that “may be referred to or recommended by word of mouth.” Id. (citing Miles Labs., Inc. v. Whorton Pharmacal Co., 199 U.S.P.Q. 758 (TTAB 1978)).
In the comparison analysis, literal portions are generally the dominant and most significant features of marks comprised of literal and design elements, because consumers will call for the goods or services in the marketplace by referencing literal elements of the mark. E.g., CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 200 (Fed. Cir. 1983) (finding minor designs insufficient to obviate likely confusion); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods.”). Therefore, greater weight is often given to the distinctive literal portions of the mark, i.e., arbitrary, fanciful and suggestive terms, over the non-distinctive portions of a mark, i.e., descriptive and generic terms and minor design elements. TMEP § 1207.01(c)(ii).
In comparison, the marks resemble each other. First and most significantly, both marks share the terms “DEVIL FACE,” in identical order. Based on examination, the cited registered mark is the only such live mark in the USPTO database of trademarks. In addition, the marks share the same meaning and the same sound.
Second, Applicant’s applied-for mark, DEVIL FACE, is a special form mark consisting of this wording below an image, which Applicant describes as a devil’s face. The cited registered mark, DEVILFACE, is presented in standard character form. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008). Therefore, in actual use, the cited registered mark may be displayed in a same manner of font, style, color and size as the literal elements of the proposed mark in this application. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).
Third, the terms “DEVIL FACE” form the entirety of the cited registered mark and this fact is critical in this comparison analysis, as Applicant’s proposed mark incorporates the cited registered mark. Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010) (citations revised) (“ML” for personal care and skin care products and “ML MARK LEES” for skin care products); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 U.S.P.Q. 105, 106 (C.C.P.A. 1975) (“BENGAL” for gin and “BENGAL LANCER” for nonalcoholic club soda, quinine water and ginger ale); In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1269 (TTAB 2009) ( “VANTAGE TITAN” for MRI diagnostic apparatus and “TITAN” for medical ultrasound device); In re U.S. Shoe Corp., 229 U.S.P.Q. 707 (TTAB 1985) (“CAREER IMAGE” for women's clothing stores and women's clothing and “CREST CAREER IMAGES” for uniforms); In re S. Bend Toy Mfg. Co., 218 U.S.P.Q. 479, 480 (TTAB 1983) (“LIL’ LADY BUG” for toy doll carriages and “LITTLE LADY” for doll clothing); Helga, Inc. v. Helga Howie, Inc., 182 U.S.P.Q. 629, 630 (TTAB 1974) (“HELGA” for women’s clothing and “HELGA HOWIE” for women’s clothing); In re Hepperle, 175 U.S.P.Q. 512, 512 (TTAB 1972) (“ACAPULCO GOLD” for suntan lotion and “ACAPULCO” for lipstick and powder).
The differences between the marks are the spacing of the literal elements and the addition of a design element in Applicant’s proposed mark. However, the design element of Applicant’s proposed mark serves to reinforce the literal element of the mark, and therefore, strengthens the commercial significance of the literal elements. Furthermore, while Applicant’s proposed mark has a space between the terms, the difference in spacing has no trademark significance. In re Iolo Technologies, LLC, 95 U.S.P.Q.2d 1498, 1499 (TTAB 2010).
Thus, Applicant has appropriated the cited registered mark “DEVILFACE” into its proposed mark, with “DEVIL FACE,” a commercially strong term, being the most significant portion of Applicant’s mark.
In sum, Applicant’s mark sufficiently resembles the cited registered mark that, if used in connection with the same or related goods, confusion would be likely to occur.
Viewed in their entireties with the differences evaluated, the marks are sufficiently similar in appearance, sound and connotation, and would create highly similar commercial impressions on the minds of purchasers. Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002). Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018). “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002).
Here, the comparison is between the following:
Goods in this application:
Athletic uniforms; Coats; Costumes for use in role-playing games; Frocks; Halloween costumes; Infantwear; Mantles; Masquerade costumes; Pants; Skirts; Suits; Tights; Tops as clothing; Underwear; Women's clothing, namely, shirts, dresses, skirts, blouses; Men's suits, women's suits;
Relevant goods in U.S. Registration No. 5451235:
Carnival masks;
Paper party hats;
Theatrical masks;
Toy masks;
Toy and novelty face masks.
In comparing the goods in this application with the relevant goods listed in the cited registration, the attached evidence, comprised of digital images of from costume retailers’ webpages, see attached evidence, and third-party registrations from the USPTO database of trademarks, see U.S. Reg. Nos. 5422850, 5544791, 5582282, 5584170, 5625726, 5710697, 5750404, 5768521, 5789900, 5817353, 5871096, 5874950, 5939356, supports a determination that these types of goods are commonly sold in connection with at least one source identifier by third parties, and are related and interrelated goods. See, e.g., In re Infinity Broad. Corp., 60 U.S.P.Q.2d 1214, 1217–18 (TTAB 2001); In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1470 at n.6 (TTAB 1988).
In considering the channels of trade and classes of purchasers, because there are no limitations in the cited registration and the subject application, it is presumed that the respective goods travel in all normal channels of trade and are offered to all potential relevant consumers. In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017).
In view of the foregoing analysis, the respective goods are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.
Based on a determination that the marks are similar and the goods are related, and the evidentiary showing and presumption that the respective goods move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
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.
Applicant must respond timely and completely to the issues raised in this Office Action. 15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03. Otherwise, this application will be abandoned. 37 C.F.R. § 2.65(a).
How to respond: Click to file a response to this non-final Office action. 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.
Please contact the undersigned attorney with any additional questions.
Sincerely,
/Judy Helfman/
Judith M. Helfman
Attorney, Law Office 111
571/272-5892
judy.helfman@uspto.gov
RESPONSE GUIDANCE
