To: | INTERNATIONAL FOODSTUFFS CO. LLC (nwells@legendslaw.com) |
Subject: | U.S. Trademark Application Serial No. 88654499 - OH BOY - 5273.248 |
Sent: | January 23, 2020 12:48:37 PM |
Sent As: | ecom105@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 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88654499
Mark: OH BOY
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Correspondence Address:
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Applicant: INTERNATIONAL FOODSTUFFS CO. LLC
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Reference/Docket No. 5273.248
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 23, 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.
SECTION 2(d) REFUSAL – 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. 5804376, 5804373, 4533759, 4904543, 2002655, and 0197035. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied for mark is OH BOY for “Chocolates, Confectionery Products, Popcorn and Biscuits”. The registered marks are:
1) Registration No. 5804376, OBOY plus design for “dough enrobed foods consisting of a dough-based wrapper with fillings consisting primarily of meats and cheeses; baked goods, namely, bread”;
2) Registration No. 5804373, OBOY for “dough enrobed foods consisting of a dough-based wrapper with fillings consisting primarily of meats and cheeses; baked goods, namely, bread”;
3) Registration No. 4533759, OH BOY! BRAND, for “Prepared entrees and side dishes, namely, lasagna, spaghetti, macaroni and cheese, garlic bread, pizza; prepared entrees consisting primarily of pasta or rice”;
4) Registration No. 4904543, O-BOY, for FOOD PRODUCTS, NAMELY, DOUGHNUTS
5) Registration No. 2002655, OH! BOY for “table syrup”;
6) Registration No. 0197035, OH! BOY for “table syrup.
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.
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).
Registration Nos. 5804376 and 5804373, “OBOY” and Registration No. 4904543, “O-BOY”
In the present case, the applicant’s mark OH BOY is similar to the registrants’ marks in sound, appearance and connotation. The marks are essentially phonetic equivalents and thus sound similar. All of the marks are pronounced like the terms “OH BOY”. 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).
Registration No. 4533759, “OH BOY! BRAND”, Registration Nos. 2002655 and 0197035 “OH! BOY”
In the present case, the applicant’s mark OH BOY is essentially identical to the registrants’ marks in sound, appearance and connotation. All the marks consist of the terms OH BOY. With respect to Registration no. 4533759, “OH BOY! BRAND”, the dominant portion of the mark are the words OH BOY which is identical to the applicants mark. With respect to Registration Nos. 2002655 and 0197035, OH! BOY, the mark is identical to the applicants mark in that they 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 based on the above the marks are confusingly similar.
Relatedness of the Goods and Services
Registration Nos. 5804376, 5804373 and 4533759
The applicant’s goods of “Chocolates, Confectionery Products, Popcorn and Biscuits” are related to the registrant’s goods of “dough enrobed foods consisting of a dough-based wrapper with fillings consisting primarily of meats and cheeses; baked goods, namely, bread”; “Prepared entrees and side dishes, namely, lasagna, spaghetti, macaroni and cheese, garlic bread, pizza; prepared entrees consisting primarily of pasta or rice”; because the goods consist of items found at bakery or by companies who provide baked goods.
Registration No. 4904543, O-BOY, for FOOD PRODUCTS, NAMELY, DOUGHNUTS
The applicant’s goods of “Chocolates, Confectionery Products, Popcorn and Biscuits” are related to the registrant’s goods of “food products, namely, doughnuts” because the goods consist of bakery items. In fact the applicant’s confectionary products encompass the registrant’s goods. Please see attached Wikipedia article where it states bakers confectionery products consist of doughnuts.
In this case, the application uses broad wording to describe “confectionery products”, which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow “doughnuts”. 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.
Registration No. 2002655 and 0197035, OH! BOY for “table syrup”;
The applicant’s goods of “Chocolates, Confectionery Products, Popcorn and Biscuits” are related to the registrant’s goods of “table syrup” because the goods are of type sold by chocolatiers and similar candy shops.
Based on the above the goods are related.
Conclusion
Since the marks are similar which creates the same commercial impression and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods. Therefore, the applicant’s mark is not entitled to registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Chocolates, Confectionery Products, namely, {specify the type of confectionery products, i.e. frozen confectionery}, Popcorn and Biscuits.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
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.
Lewis, Lakeisha M.
/Lakeisha S. Munn Lewis/
Trademark Examining Attorney
Law Office 105
(571)272-1910
Lakeisha.Lewis@uspto.gov
RESPONSE GUIDANCE