United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88661337
Mark: LAZYBIRD
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Correspondence Address:
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Applicant: Ennismore International Management Limit ETC.
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Reference/Docket No. A165-117
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 12, 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.
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. 4694887 and 4694888. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant’s mark is LAZYBIRD. The registrant’s marks are (1) LAZY BIRD BROWN ALE for Serial No. 4698887 and (2) LAZY BIRD BROWN ALE with design for Serial No. 4694888. The marks are similar in appearance, sound, connotation and commercial impression because they share the terms “LAZY BIRD.” Although the registrant’s mark also contains the additional wording “BROWN ALE” and a design the mere addition of these elements does not meaningfully alter the sound, appearance, and commercial impression in such a way to avoid the likelihood of confusion.
Comparing the Goods and Services
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The applicant’s services are “bar and restaurant services; coffee shops; ice cream parlors.” The registrant’s goods are “beer.”
In this case, the evidence of record consists of excerpts from several beer breweries that also feature restaurant services. This evidence shows that the goods and services at issue are related because they frequently originate from a common source and the goods and services are provided using the same mark. Consumers encountering the marks of the parties and the identified goods and services are likely to be confused and believe that the applicant’s services and the registrant’s goods emanate from the same source.
For the foregoing reasons registration is refused under Section 2(d) of the Trademark Act.
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.
An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system. Enter the application serial number or registration number and click on “Status” or “Documents.”
How to respond. Click to file a response to this nonfinal Office action
/Michael J.Souders/
Michael J. Souders
Examining Attorney
Law Office 115
571-272-9483
Michael.Souders@uspto.gov
RESPONSE GUIDANCE