To: | Parton, Dolly (wholbrow@buchalter.com) |
Subject: | U.S. Trademark Application Serial No. 88829103 - DOLLY - D6525-5025 |
Sent: | January 15, 2021 04:24:03 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 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
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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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: January 15, 2021
This Office action is in response to applicant’s communication filed on 12/10/2020.
In a previous Office action dated 6/10/2020, 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 marks in U.S. Registration Nos. 5225271 and 2339757. In addition, applicant was required to satisfy the following requirements: submit a consent statement signed by the individual named in the mark, amend the identification and classification of goods, comply with the multiple-class application requirements, amend the mark description, and provide applicant’s domicile address.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: submit a consent statement signed by the individual named in the mark, amend the mark description, and provide applicant’s domicile address. See TMEP §§713.02, 714.04.
In addition, the following Section 2(d) refusal has been withdrawn as to U.S. Registration No. 2339757. See TMEP §§713.02, 714.04.
However, the trademark examining attorney maintains and now makes final the Section 2(d) refusal as to U.S. Registration No. 5225271 as well as the requirements to amend the identification and classification of goods and comply with the multiple-class application requirements. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5225271. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
Applicant seeks to register the mark DOLLY (and design) for, as amended, “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, 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” in International Class 21 and “bathtub mats; bath mats; rugs; bathroom rugs; wall coverings of textile; carpet” in International Class 27.
Registrant’s mark is DOLLY-MIX (in typed drawing form) for goods including “lint rollers; combs; cleaning cloths” in International Class 21, “Towels; blankets for outdoor use” in International Class 24, and “Carpets, rugs, mats and matting” in International Class 27.
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 and registrant’s mark are identical in part and highly similar in terms of sound, appearance, connotation and commercial impression due to the fact the marks share the term “DOLLY.”
The addition of a design in applicant’s mark does not obviate the overall confusing similarity between the applied-for mark and the registered mark. 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 and registrant’s goods are identical in part and closely related. In particular, 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 registrant’s “mats” encompass applicant’s “bathtub mats” and “bath mats.” Applicant’s “dish cloths” in Class 21 are also encompassed by registrant’s “cleaning cloths” in that the former are merely a type of cleaning cloth for the specific purpose of cleaning (i.e. washing and drying) dishes (see attached dictionary evidence showing that a dishcloth is a cloth for washing dishes). 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)).
Additionally, the goods 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 are related.
Moreover, the trademark examining attorney has previously attached and is now attaching additional evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely cleaning cloths and towels, on the one hand, and dish cloths, oven mitts, scrub brushes, pot and pan scrapers, kitchen sponges, and other household cleaning and kitchen supplies, on the other hand, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
The attached Internet evidence, consisting of screenshots from the websites of third parties that make and/or sell towels as well as dish cloths, oven mitts, and baskets, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant’s Arguments
Applicant argues that a finding of confusing similarity between the marks relies upon an improper dissection of the marks. This argument is unpersuasive. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). In this case, the examining attorney has not dissected the marks and has merely placed appropriate emphasis on the shared wording in the marks, “DOLLY,” which appears as the first or only term in each mark.
Applicant also argues that “[n]o consumer, upon seeing the [marks] next to each other, would not [sic] think they were in any way affiliated with each other.” When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Lastly, applicant contends that an Internet search for the registrant’s mark does not yield any results indicating that the registrant is using its mark in U.S. commerce. However, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services. See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).
Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.
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 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. 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.
IDENTIFICATION AND CLASSIFICATION OF GOODS
In addition, the wording “reusable indicate material composition, e.g., glass and stainless steel, etc. water bottles sold empty” in International Class 21 must be clarified by deleting the indefinite wording “indicate material composition, e.g., glass and stainless steel, etc.” and specifying the material composition of the goods.
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.
Applicant may adopt the following identification and classification of goods, if accurate:
International class 9: KITCHEN TIMERS
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, 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 27: bathtub mats; bath mats; rugs; bathroom rugs; wall coverings of 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 3 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.
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 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).
/J. Evan Mucha/
J. Evan Mucha
Examining Attorney
Law Office 106
571-270-1989
evan.mucha@uspto.gov
RESPONSE GUIDANCE