To: | Max Rohr, Inc. (uspto@gandb.com) |
Subject: | U.S. Trademark Application Serial No. 88649008 - BLUE DREAM - N/A |
Sent: | January 22, 2020 10:32:50 AM |
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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88649008
Mark: BLUE DREAM
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Correspondence Address:
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Applicant: Max Rohr, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 22, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is BLUE DREAM for “Cigarillos; Cigars” in Class 34.
The registered mark is BLUE DREAM VAPOR for “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges and electronic cigarette cartridges in the nature of tubes, cylinders and capsules; chemical flavorings in liquid form used to refill electronic cigarette cartridges and electronic cigarette cartridges in the nature of tubes, cylinders and capsules; cartridges and cartridges in the nature of tubes, cylinders and capsules all sold filled with chemical flavorings in liquid form for electronic cigarettes; vaporizable, chemical flavoring in liquid form for use with reusable cartridges, atomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigarettes and smokeless cigarette vaporizer pipes; vaporizable, chemical flavoring in liquid form for use with reusable cartridges, atomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigars and smokeless cigar vaporizer pipes; vaporizable, chemical flavoring in liquid form for use with disposable cartridges, cartomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigarettes and smokeless cigarette vaporizer pipes; vaporizable, chemical flavoring in liquid form for use with disposable cartridges, cartomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigars and smokeless cigar vaporizer pipes; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic smokeless cartridges for electronic cigars and electronic hookahs in the nature of tubes, cylinders and capsules; chemical flavorings in liquid form used to refill electronic smokeless cartridges for electronic cigars and electronic hookahs in the nature of tubes, cylinders and capsules; cartridges and cartridges in the nature of tubes, cylinders and capsules all sold filled with chemical flavorings in liquid form for electronic cigarettes; vaporizable, chemical flavoring in liquid form for use with reusable cartridges, atomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic hookahs; vaporizable, chemical flavoring in liquid form for use with disposable cartridges, cartomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic hookahs” in Class 30.
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. 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.
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).
In this case, applicant’s mark is BLUE DREAM and the registered mark is BLUE DREAM VAPOR.
These marks are similar. First, they share the identical wording “BLUE DREAM”. BLUE means “of the color whose hue is that of the
clear sky : of the color blue”. See http://www.merriam-webster.com/dictionary/blue. DREAM means “a series of thoughts, images, or emotions occurring during sleep”. See http://www.merriam-webster.com/dictionary/dream. The meaning of this term does not immediately differ in relation to the respective tobacco and vaping
goods. Therefore, the marks share wording that is identical in sound, appearance, and meaning.
The registered mark contains the additional term VAPOR, which has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In the context of vaping goods, VAPOR refers to the aerosol created by the goods. See http://www.centeronaddiction.org/e-cigarettes/recreational-vaping/what-vaping. Therefore, consumers are less likely to focus on this wording, rendering BLUE DREAM the dominant portion of the registrant’s mark.
Therefore, as the marks share identical wording and the additional matter in registrant’s mark merely indicates the type of goods, these marks are confusingly similar.
Relatedness of the Goods
Here, applicant’s goods are “Cigarillos; Cigars” in Class 34.
Registrant’s goods are “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges and electronic cigarette cartridges in the nature of tubes, cylinders and capsules; chemical flavorings in liquid form used to refill electronic cigarette cartridges and electronic cigarette cartridges in the nature of tubes, cylinders and capsules; cartridges and cartridges in the nature of tubes, cylinders and capsules all sold filled with chemical flavorings in liquid form for electronic cigarettes; vaporizable, chemical flavoring in liquid form for use with reusable cartridges, atomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigarettes and smokeless cigarette vaporizer pipes; vaporizable, chemical flavoring in liquid form for use with reusable cartridges, atomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigars and smokeless cigar vaporizer pipes; vaporizable, chemical flavoring in liquid form for use with disposable cartridges, cartomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigarettes and smokeless cigarette vaporizer pipes; vaporizable, chemical flavoring in liquid form for use with disposable cartridges, cartomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic cigars and smokeless cigar vaporizer pipes; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic smokeless cartridges for electronic cigars and electronic hookahs in the nature of tubes, cylinders and capsules; chemical flavorings in liquid form used to refill electronic smokeless cartridges for electronic cigars and electronic hookahs in the nature of tubes, cylinders and capsules; cartridges and cartridges in the nature of tubes, cylinders and capsules all sold filled with chemical flavorings in liquid form for electronic cigarettes; vaporizable, chemical flavoring in liquid form for use with reusable cartridges, atomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic hookahs; vaporizable, chemical flavoring in liquid form for use with disposable cartridges, cartomizers and cartridges in the nature of tubes, cylinders and capsules all for use in battery powered, rechargeable and portable vaporizing units for electronic hookahs” in Class 30.
These goods are related. Specifically, these goods are commonly sold together in specialty smoke shops. See http://www.cigarnvapes.com/cigars/; http://www.cigarnvapes.com/disposable-vape-pen-e-cigarettes/ (smoke shop offering cigars and vaping products); http://www.cigarandsmokeshop.com/ (specialty shop offering cigars and vaping products); http://nashvapers.com/ (specialty store offering cigars and vaping products); http://vapencigar.com/ (specialty store offering cigars and vaping products).
Further, the marks are highly similar. Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods 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).
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal – Likelihood of Confusion
REQUIREMENT
MARK SIGNIFICANCE INQUIRY
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Alison Keeley/
Examining Attorney
Law Office 113
(571) 272-4514
Alison.Keeley@uspto.gov
RESPONSE GUIDANCE