| To: | TRIPLE J BEDDING AND SONS CORP (tyler-pto@lozaip.com) |
| Subject: | U.S. Trademark Application Serial No. 88805066 - SHOPBEDDING - AIPA-784 |
| Sent: | May 11, 2020 03:02:45 PM |
| Sent As: | ecom124@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
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. 88805066
Mark: SHOPBEDDING
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Correspondence Address:
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Applicant: TRIPLE J BEDDING AND SONS CORP
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Reference/Docket No. AIPA-784
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: May 11, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
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. 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.
Applicant has applied to register:
The registered mark is:
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, the applied for wording in the mark is SHOPBEDDING, and the wording in the registered mark is SHOPBEDDING. The terms are identical in sound. While the terms have a very slightly different commercial impression when used in conjunction with goods as opposed to services, when used in conjunction with highly related home goods and bedding goods and services, both “have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015).
While the registered mark, for use with services, has been registered on the Supplemental Register, the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods and/or services. TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). Thus, this protection under Section 2(d) extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent Software, Inc., 913 F.2d 942, 946, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research & Trademark Corp., 793 F.2d 1276, 1278, 230 USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978)).
Finally, while the applied-for mark incorporates a slightly different stylization and a design element, the word portions of the marks are nearly identical in appearance, sound, and connotation; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Accordingly, the marks are confusingly similar.
RELATEDNESS OF THE GOODS AND SERVICES
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
In this case, the applied-for goods are bedding and home goods, and the registered services are online retail store services which feature these same types of products. As shown by applicant’s specimen and the attached evidence from applicant’s website, applicant provides its goods under the applied-for mark, as well as also providing services identical to those in the registration under the same mark. Accordingly, the goods and online retail store services featuring those goods are highly related.
In this case, the wording in applicant's and registrant's marks is identical, yielding confusingly similar marks in terms of sound, appearance and commercial impression. The confusingly similar marks, coupled with the relationship between the goods and services, combines to create a substantial likelihood that consumers will be confused as to the source of the goods and/or services. Therefore, registration is refused under Section 2(d) of the Trademark Act.
RESPONSE OPTION IF APPLICANT OWNS PRIOR REGISTRATION - ADVISORY
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:
“Applicant is the owner of U.S. Registration No. 5677001.”
If the statement is not verified with an affidavit or signed declaration under 37 C.F.R. §2.20, it cannot be accepted.
To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
DEFINITE IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRED
The wording “home goods” in the identification of “home goods” must be clarified because it is too broad and could include goods in multiple international classes, including kitchen and bath linens in Class 024, lamps in Class 011, and rugs in Class 027. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant must amend the identification to specify the common commercial name of the goods, and comply with the multiple class application requirements in the next section.
Applicant may substitute the following wording, if accurate:
International Class 011: home goods, namely, lamps
International Class 020: pillows
International Class 024: bedding, namely, sheets, pillow cases, pillow coverings, comforters, duvet covers quilts, blankets, throws, bed skirts, pillow shams, mattress covers, mattress pads; towels; Fabric window coverings and treatments, namely, curtains, door curtain panels, sheers, swags, and valances; home goods, namely, kitchen and bath linens
International Class 027: home goods, namely, rugs
See TMEP §1402.01, 1402.03.
Applicant should note that the bolded language above is to indicate the examining attorney's suggestions. Applicant need not amend its identification other than where specified.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application references goods based on use in commerce in more than one international class; therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) satisfy all the requirements below for each international class, including submitting the required fees for each additional class:
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that may be classified in at least four classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 024; and applicant needs a specimen for all other classes, including Classes 011, 020, and/or 027. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action.
/Christina M. Riepel/
Trademark Examining Attorney
Law Office 124
(571) 272-6358
christina.riepel@uspto.gov
RESPONSE GUIDANCE
