To: | Parton, Dolly (wholbrow@buchalter.com) |
Subject: | U.S. Trademark Application Serial No. 88829103 - DOLLY - D6525-5025 |
Sent: | June 10, 2020 09:36:15 PM |
Sent As: | ecom106@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 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88829103
Mark: DOLLY
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Correspondence Address: |
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Applicant: Parton, Dolly
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Reference/Docket No. D6525-5025
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: June 10, 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.
SUMMARY OF ISSUES:
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. 5225271 and 2337957. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant seeks to register the mark DOLLY (and design) for “Tooth brush holders, bathroom glass holder, wastepaper basket, soap holder/dish, lotion dispenser, ceramic tissue box covers, cotton ball jars; dinnerware, plates, serving bowls, serving platters, glassware, napkin rings, napkin holders, napkin rings of precious metal, vases, pitchers, salt and pepper shakers, trivets, candle holders, water bottles sold empty, reusable indicate material composition, e.g., glass, stainless steel, etc. water bottles sold empty, cookware, wood cooking planks for use in grilling, cookware for use in microwave ovens, paella pans, pizza stones, roasting pans, pots and pans, skillets, steamers, tagines, woks, non-electric pressure cooker, bakeware, bakeware sets, baking dishes, casserole dishes, cooling racks for baked goods, pans, cake domes, pie dishes, tart pans, ramekins and soufflé dishes, baking mats, cookie cutters, cookie presses, colanders, cooking strainers, mixing bowls, cutting boards, oven mitts, glass jars, glass storage jars, mason jars, plastic storage containers, fermenting jars, jam jars, lunch boxes, kitchen sponges, kitchen timers, dish cloths, scrub brushes, pots and pans scrapers, rubber gloves, baskets for household purposes, coasters, wine coasters” in International Class 21 and “Tub mats, bath mats, rugs, bathroom rugs, wall coverings, carpet” in International Class 27.
The mark in U.S. Registration No. 5225271 is DOLLY-MIX (in standard characters) for goods including “Towels; blankets for outdoor use” in International Class 24 and “Carpets, rugs, mats and matting” in International Class 27.
The mark in U.S. Registration No. 2337957 is DOLLY MADISON (in typed drawing form) for “furniture” in International Class 20.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, applicant’s mark is identical in part and highly similar in terms of sound, appearance, connotation and commercial impression to each of the cited registered marks due to the fact the marks all share the term “DOLLY.”
In each case, the applied-for mark simply removes a term from the registered mark and adds a design. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
With regard to U.S. Reg. No. 2337957 (DOLLY MADISON), in particular, the marks are highly similar in connotation and commercial impression because they both evoke the impression of an individual’s name.
The addition of a design in applicant’s mark does not obviate the overall confusing similarity between the applied-for mark and the registered marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In sum, the marks at issue are confusingly similar.
Relatedness of the Goods
Here, applicant’s goods identical in part and/or closely related to the goods in each of the cited registrations.
With regard to U.S. Registration No. 5225271 (DOLLY-MIX), the registrant’s “carpets” and “rugs” are identical to the “carpets” and “rugs” in applicant’s identification in Class 27. Additionally, registrant’s “rugs” encompass applicant’s narrower “bathroom rugs” and registrat’s “mats” encompass applicant’s “tub mats” and “bath mats.” 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 in part. 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
As for U.S. Registration No. 2337957 (DOLLY MADISON), the registrant’s “furniture” is closely related to applicant’s various home goods and floor and wall coverings in that both are commonly used to furnish one’s home or other interior space and both are commonly manufactured and sold by the same entities under the same marks.
To the extent the evidence of record does not address every single item in applicant’s identification of goods, applicant is reminded that it is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods and/or services in a particular class in the application. Tuxedo Monopoly,Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
Summary
In sum, due to the similarity of the marks and the relatedness of the respective goods, it is likely consumers will mistakenly believe the goods emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant(s) 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(s). TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
CONSENT STATEMENT REQUIRED
Because the individual named in the mark did not sign the application and the application did not include a proper written consent, applicant must provide a statement that the name in the mark identifies a particular living individual and a written consent to register the name. See 15 U.S.C. §1052(c); TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.
Accordingly, applicant must submit both of the following:
(1) The following statement: “The name shown in the mark identifies a living individual whose consent to register is made of record.”
(2) A written consent, personally signed by the named individual, as follows: “I, Dolly Parton, consent to the use and registration of my name, DOLLY, as a trademark and/or service mark with the USPTO.”
For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Certain wording in the identification of goods in International Classes 21 and 27 is indefinite, overly broad, and/or misclassified and requires amendment as indicated below. TMEP §§1402.01, 1402.03.
In particular, applicant must clarify the nature of the “soap holder/dish,” taking care to eliminate the unacceptable forward slash. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a).
The wording “glassware” is overly broad and must be clarified to specify the particular type of glassware. Measuring glassware, for instance, is in International Class 9, whereas beverage glassware is in International Class 21.
Applicant must clarify the wording “reusable indicate material composition, e.g., glass, stainless steel, etc. water bottles sold empty” because it is indefinite and an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar services,” “and related services”) that is not acceptable because it fails to identify specific services. See TMEP §1402.03(a). In an identification, an applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP §§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the services set forth in the initial application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
The wording “steamers,” “tagines,” “cookie presses,” “plastic storage containers,” “coasters” and “wine coasters” in Class 21 must also be clarified because the wording in each case could include goods in other classes. Please see the suggested amendments (and additional class suggestions) below.
The wording “kitchen timers” is definite but improperly classified in International Class 21; the proper classification is International Class 9. Therefore, applicant may respond by (1) adding International Class 9 to the application and reclassifying these goods in the proper international class, (2) deleting “kitchen timers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
Applicant is also advised that it must correct the punctuation in the identification to clarify the individual items in the list of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Please see the suggested amendments below. Applicant should note that any wording in bold, in italics, and/or in ALL CAPS below offers guidance or shows the changes being proposed for the identification of goods and/or services. If there is
wording in the applicant’s identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making amendments, applicant should enter them in standard font, not in bold, in italics, and/or in ALL CAPS. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following identification and classification of goods, if accurate:
International Class 9: MEASURING GLASSWARE; KITCHEN TIMERS
International Class 11: ELECTRIC FOOD STEAMERS; ELECTRIC TAGINES
International Class 16: COASTERS OF PAPER; WINE COASTERS OF PAPER
International Class 17: RUBBER INSULATING GLOVES
International Class 20: PLASTIC STORAGE CONTAINERS FOR COMMERCIAL OR INDUSTRIAL USE
International Class 21: Tooth brush holders; bathroom glass holder; wastepaper basket; soap holder
IN THE FORM OF A dish; lotion dispenser; ceramic tissue box covers; cotton ball jars;
dinnerware; plates; serving bowls; serving platters; BEVERAGE glassware; napkin rings; napkin holders; napkin rings of precious metal; vases; pitchers; salt and pepper shakers; trivets; candle holders; water bottles sold empty; reusable indicate material composition, e.g., glass AND stainless steel, etc. water bottles sold empty; cookware,
NAMELY, __________ {specify types of cookware, namely, pots and pans}; wood cooking planks for use in grilling; cookware for use in microwave
ovens; paella pans; pizza stones; roasting pans; pots and pans; skillets; steamers BEING COOKWARE; NON-ELECTRIC tagines; woks; non-electric pressure cooker; bakeware; bakeware sets; baking dishes; casserole dishes; cooling racks for baked goods; pans; cake domes; pie dishes; tart pans; ramekins and soufflé dishes;
baking mats; cookie cutters; HAND-OPERATED cookie presses; colanders; cooking
strainers; mixing bowls; cutting boards; oven mitts; glass jars; glass storage
jars; mason jars; plastic storage containers FOR HOUSEHOLD OR DOMESTIC USE; GLASS fermenting jars; jam jars; lunch boxes; kitchen sponges; kitchen timers, dish cloths; scrub brushes; pots and pans scrapers; rubber HOUSEHOLD gloves; baskets for household
purposes; coasters NOT OF PAPER OR TEXTILE; wine coasters NOT OF PAPER OR TEXTILE
International Class 24: COASTERS OF TEXTILE; WINE COASTERS OF TEXTILE
International Class 27: BATHTUB mats; bath mats; rugs; bathroom rugs; wall coverings OF __________ {specify material composition, e.g., textile}; carpet
See TMEP §1402.01.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 8 classes; however, applicant submitted fees sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
MARK DESCRIPTION AMENDMENT REQUIRED
The following description is suggested, if accurate: The mark consists of the word “DOLLY” in script form with a butterfly to its right, all inside a shaded rectangle.
Note: If applicant does not intend to claim the shaded rectangle element as a feature of the mark, applicant may obviate this requirement by instead submitting a new drawing showing the mark in black on a white background (i.e. to remove the shaded rectangular element). See 37.C.F.R. 2.52(b); TMEP §807.04 (“The drawing should show the mark in black on a white background, unless the mark includes color”).
DOMICILE ADDRESS REQUIRED
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as an individual and specifies applicant’s domicile as “c/o” or in “care of” another party’s address. In most cases, an address that is listed as “c/o” or in “care of” another party’s address is not acceptable as a domicile address because it does not identify the location of the place applicant resides and intends to be applicant’s principal home. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
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.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/J. Evan Mucha/
J. Evan Mucha
Examining Attorney
Law Office 106
571-270-1989
evan.mucha@uspto.gov
RESPONSE GUIDANCE