United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88636604
Mark: CALLIE
|
|
Correspondence Address: LERNER, DAVID, LITTENBERG, KRUMHOLZ & ME
|
|
Applicant: TRADING PASSION LIMITED
|
|
Reference/Docket No. 9JET.48
Correspondence Email Address: |
|
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: January 03, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Prior-filed Application—Advisory
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is “CALLIE”, for use with:
Class 14: Agates; Bracelets; Charms for jewelry; Earrings; Jewelry; Jewelry brooches; Jewelry findings, namely, jump rings, toggles, clasps; Necklaces; Pins being jewelry; Rings
The registered marks are as follows:
|
REGISTRATION NO. |
MARK |
RELEVANT GOODS AND/OR SERVICES |
1. |
5529989 |
CALY |
Class 14: Agates; Alloys of precious metal; Beads for making jewelry; Brooches; Cloisonné jewelry; Gemstone jewelry; Jade; Jewelry; Jewelry chains; Jewelry for attachment to clothing; Key chains for use as jewellery; Lockets; Necklaces; Ornaments of jet; Pearls; Precious stones; Semi-precious stones; Spinels; Threads of precious metal |
2. |
5635670 |
CALIE |
Class 9: Sunglasses |
3. |
5467698 |
CALLI B. |
Class 14: Jewelry |
4. |
3012144 |
CALLIE GIRL |
Class 25: Clothing and accessories, namely, pants, shirts, sweatshirts, sweaters, jackets, gloves, hats, shoes, sneakers, underwear, sleepwear, and scarves |
5. |
4094923 |
KALI |
Class 14: Jewelry |
6. |
3649153 |
CALLIE LEE |
Class 40: custom manufacture of jewelry for others
Class 42: custom design of jewelry based on personal selections by the customers |
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 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 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and/or 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.
Comparison of 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).
As Compared to Registration Nos. 5529989, 5635670, and 4094923
Applicant's mark is “CALLIE” and the registrants' marks are “CALY”, “CALIE”, and “KALI”. Here, applicant's and the registrants' marks are highly similar, if not identical, in sound. The marks are essentially phonetic equivalents and thus sound similar. 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).
Therefore, the marks are confusingly similar.
As Compared to Registration Nos. 5467698 and 3649153
Applicant's mark is “CALLIE” and the registrants' marks are “CALLIE GIRL” and “CALLIE LEE”. Here, applicant has merely deleted matter from the registrants' marks to create its own mark. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from these marks.
Therefore, the marks are confusingly similar.
As Compared to Registration No. 5467698
Applicant's mark is “CALLIE” and the registrant's mark is “CALLI B.” Here, applicant's mark is identical in sound to the first portion of the registrant's mark. Note that marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). The similar terms “CALLIE” comprising applicant's mark and “CALLI” comprising the first portion of the registrant's mark create a similar overall commercial impression, namely, that of a woman’s first name.
Because applicant's mark is highly similar to the first, most prominent term in the registrant's mark, the marks are confusingly similar.
Comparison of Goods and Services
As Compared to Registration Nos. 5467698 and 4094923
In this case, the goods in the application and registrations are identical. Specifically, both applicant and the registrants claim “jewelry.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and the registrants’ goods are related.
As Compared to Registration No. 5529989
As discussed above, when analyzing an applicant’s and registrant’s goods and for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.
In this case, the goods in the application and registration are identical. Specifically, both applicant and the registrant claim “jewelry,” “agates,” and “necklaces.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and the registrant’s goods are related.
Further, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe jewelry, which presumably encompasses all goods of the type described, including registrant’s more narrow brooches, cloisonné jewelry, gemstone jewelry, jewelry chains, jewelry for attachment to clothing, key chains for use as jewellery, and lockets. 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 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 are related.
As Compared to Registration No. 5635670
Applicant's goods include jewelry, and the registrant's goods are sunglasses. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from ASOS, Missguided, and Madewell showing jewelry and sunglasses provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
As Compared to Registration No. 3012144
As previously discussed, the compared goods need not be identical or even competitive to find a likelihood of confusion. They need only be related in some manner such that they could give rise to the mistaken belief that the goods emanate from the same source
Applicant's goods include jewelry, and the registrant's goods include pants, shirts, and shoes. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from ASOS, Madewell, and Missguided showing jewelry, pants, shirts, and shoes provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
As Compared to Registration No. 3649153
As previously discussed, the compared goods and services need not be identical or even competitive to find a likelihood of confusion. They need only be related in some manner such that they could give rise to the mistaken belief that the goods and services emanate from the same source
Applicant's goods include jewelry, and the registrant's services include custom manufacture of jewelry for others and custom design of jewelry based on personal selections by the customers Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Mars Fine Jewelry, Jared, and Tiny Jewel Box showing goods such as jewelry and services such as custom manufacture of jewelry for others and custom design of jewelry provided by a single source under the same mark. Therefore, consumers familiar with the registrant's services will also expect applicant's goods to be provided by the registrant.
Conclusion
The relatedness of the goods and services here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should additionally note the advisory below.
PRIOR-FILED APPLICATION—ADVISORY
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.
RESPONSE GUIDELINES
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE