To: | Mess in a Bottle LLC (llevy@belleskatz.com) |
Subject: | U.S. Trademark Application Serial No. 88860407 - MESS - N/A |
Sent: | June 24, 2020 01:59:49 PM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88860407
Mark: MESS
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Correspondence Address:
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Applicant: Mess in a Bottle LLC
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Reference/Docket No. N/A
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 24, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
CONFUSION BASED ON REGISTRATION NO. 5843516
The proposed mark is MESS in standard characters for:
IC 025: Bathing suits; Body suits for babies; Dress shirts; Dresses; Hats; Jackets; Pants; Sweatshirts; T-shirts; T-shirts for babies
The registered mark is MESSBEBE in standard characters for:
IC 025: Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Gloves; Greatcoats; Hats; Ladies' boots; Leisure suits; Masquerade costumes; Men's suits, women's suits; Overcoats; Pantyhose; Rain coats; Shawls; Shower caps; Sweaters; Swimming costumes; T-shirts; Trousers; Underclothing; Waistbands; Wind coats; Women's clothing, namely, shirts, dresses, skirts, blouses
The marks are similar and create the same general impression. 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).
The parties provide identical and related apparel.
Consumers who encounter the parties’ similar marks used on their identical and related apparel are likely to be confused about the source of the goods.
CONFUSION BASED ON REGISTRATION NO. 5980285
The proposed mark is MESS in standard characters for:
IC 025: Bathing suits; Body suits for babies; Dress shirts; Dresses; Hats; Jackets; Pants; Sweatshirts; T-shirts; T-shirts for babies
The registered mark is LÍO in stylized form for, among other things,
IC 025: Clothing, namely, shirts, pants, jackets; footwear; headgear being headwear
The Spanish word LÍO translates to MESS. http://www.wordreference.com/es/en/translation.asp?spen=L%C3%8DO Retrieved June 24, 2020. See attachments. Also, the registration states that The English translation of "LÍO" in the mark is "MESS". Therefore, the marks are foreign equivalents.
The registrant’s mark is in Spanish, which is a common, modern language in the United States. See Ricardo Media, Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) (Spanish). The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States.
The parties provide identical and related apparel.
Consumers who encounter the parties’ similar marks used on their identical and related apparel are likely to be confused about the source of the goods.
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.
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/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
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