To: | DreamWorks Animation L.L.C. (docketing@nbcuni.com) |
Subject: | U.S. Trademark Application Serial No. 88942382 - DREAMWORKS THE BOSS BABY FAMILY - 81454995 |
Sent: | September 09, 2020 08:27:28 PM |
Sent As: | ecom113@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88942382
Mark: DREAMWORKS THE BOSS BABY FAMILY
|
|
Correspondence Address: |
|
Applicant: DreamWorks Animation L.L.C.
|
|
Reference/Docket No. 81454995
Correspondence Email Address: |
|
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: September 09, 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 THAT APPLICANT MUST ADDRESS:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, applicant seeks to register DREAMWORKS THE BOSS BABY FAMILY BUSINESS for “Toys, games and playthings, namely, action figures and accessories therefor, bathtub toys, kites, toy building blocks, board games, action skill games, manipulative games, target games, bubble making wand and solution sets, children's multiple activity toys, costume masks, mechanical toys, toy vehicles and accessories therefor, dolls, doll accessories, doll clothing, bean bag dolls, toy figures and accessories therefor, play figures, inflatable toys, flying discs, jigsaw puzzles, marbles, plush toys, puppets, ride-on toys, skateboards, balloons, roller skates, toy banks, water squirting toys, and stuffed toys; Christmas tree ornaments; water globes; pinball machines; playing cards; hand-held unit for playing electronic games adapted for use with an external display screen or monitor; hand-held unit for playing electronic games other than those adapted for use with an external display screen or monitor, golf and sports balls, stress relief exercise balls” in International Class 28. The registered mark is FAMILY BUSINESS for “BOARD GAME INCORPORATING PLAYING CARDS” in International Class 28.
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.
Comparison 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 DREAMWORKS THE BOSS BABY FAMILY BUSINESS (in standard characters). The registered mark is FAMILY BUSINESS (in standard characters).
Applicant’s mark creates a similar commercial impression to the registrant’s mark because the marks both contain the wording “FAMILY BUSINESS.” Moreover, the applied-for mark incorporates the registrant’s mark in its entirety. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Further, it is important to note that where the goods and/or services of an applicant and registrant are identical or virtually identical, as in this case, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
For all of the foregoing reasons, applicant’s mark creates a similar overall commercial impression to the registrant’s mark, and confusion is likely.
Comparison of the Goods
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “board games,” which presumably encompasses all goods of the type described, including registrant’s more narrow board games incorporation playing cards. 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. 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.
See U.S. Registration Nos. 5799046, 6030174, 6065137, 6066718, 6089805, 6122380, 6127914, 6135876 and 6141314.
Since the marks are similar and the goods are legally identical and substantially related, there is a likelihood of confusion as to the source of applicant’s goods. Accordingly, applicant’s mark is refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §1207.01 et seq. because applicant’s mark so resembles the mark in U.S. Registration No. 1616872 as to be likely to cause confusion when used on or in connection with the goods identified in the application.
DISCLAIMER REQUIRED
In this case, applicant’s mark is DREAMWORKS THE BOSS BABY FAMILY BUSINESS for a variety of toys. The attached evidence from The American Heritage Dictionary of the English Language online shows that the word “BABY” means “[a] very young child; an infant.” http://www.ahdictionary.com/word/search.html?q=baby. When considered in relation to the identified goods, the word “BABY” merely describes a feature and/or intended user of the goods. That is, applicant’s toys and games – which include bathtub toys, toy building blocks, manipulative games, children’s multiple activity toys, dolls, plush and stuffed toys - are for use by babies, and applicant’s dolls, stuffed and plush toys resemble babies. Wording that describes an intended user or group of users of a product or service is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).
Thus, the word “BABY” is descriptive as applied to applicant’s goods and must be disclaimed. Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BABY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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.
/Amy Kertgate/
Examining Attorney
Law Office 113
Tel: (571) 272-1943
Email: amy.kertgate@uspto.gov
RESPONSE GUIDANCE