To: | TRIPLE J BEDDING AND SONS CORP (tyler-pto@lozaip.com) |
Subject: | U.S. Trademark Application Serial No. 88805066 - SHOPBEDDING - AIPA-784 |
Sent: | November 05, 2020 11:12:31 PM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 05, 2020
This Office action is in response to applicant’s communication filed on October 22, 2020.
In a previous Office action dated May 11, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with the registered mark in U.S. Reg. No. 5677001. In addition, applicant was required to provide a definite identification and classification of goods and to comply with the multiple class application requirements.
Based on applicant’s response, the requirement to provide a definite identification and classification of goods, and the multiple class application requirements, have been satisfied. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the Section 2(d) refusal for a likelihood of confusion with the registered mark in U.S. Reg. No. 5677001. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The refusal to register the applied-for mark because of a likelihood of confusion with the mark in U.S. Reg. No. 5677001 is now made final. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. A copy of the cited registration was attached to the previous Office action and is incorporated herein by reference.
a. Claim of Ownership Unverified
In response to the refusal, applicant claimed ownership of the cited mark. The statement of ownership was not verified with an affidavit or signed declaration under 37 C.F.R. §2.20. Accordingly, the statement cannot be accepted, and the refusal is therefore maintained and made final. TMEP §812.01.
If applicant submits a verified statement claiming ownership, or otherwise provides evidence of ownership of the mark as set forth in the previous Office action, the refusal will be reconsidered.
b. Legal standards for Trademark Act Section 2(d)
In any likelihood of confusion analysis, two key considerations are: (1) the similarities between the marks, and (2) the similarities between the goods and/or services. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Applicant has applied to register, as amended:
The registered mark is:
c. The significant similarities between the marks combined with the relatedness of the goods and services makes source confusion highly likely
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).
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 previously 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.
d. Conclusion
In this case, the wording in applicant's and registrant’s marks are virtually identical in overall sound, appearance, and commercial impression. The use of confusingly similar marks in conjunction with highly related goods and services featuring those goods creates a substantial likelihood that the relevant consumers will be confused as to the source of the goods and services. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. In re Power Distrib., Inc., ___ USPQ2d ___, Ser. No. 77825939, 2012 TTAB LEXIS 402, at *12 (Sept. 29, 2012); TMEP §1207.01(d)(i); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Applicant’s unverified ownership statement has failed to obviate the refusal, and there exists no other basis upon which the refusal may be withdrawn. Accordingly, the refusal is now made final.
RESPONSE GUIDELINES FOR FINAL OFFICE ACTIONS
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Christina M. Riepel/
Trademark Examining Attorney
Law Office 124
(571) 272-6358
christina.riepel@uspto.gov
RESPONSE GUIDANCE