To: | Tana Mongeau (msalvatore@holmesweinberg.com) |
Subject: | U.S. Trademark Application Serial No. 88963194 - DIZZY - N/A |
Sent: | August 11, 2020 11:06:10 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 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88963194
Mark: DIZZY
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Correspondence Address: |
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Applicant: Tana Mongeau
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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: August 11, 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.
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. 4524136. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Applicant’s mark is DIZZY for “Hats; Sandals; Shirts; Shorts; Sweatpants; Sweatshirts; Underwear; Flip flops; Hoodies; Sports bra; Tank tops; Thong underwear; Hooded sweatshirts; Tee shirts”.
U.S. Registration No. 4524136 is DIZZYDRESS for “Costumes for use in children's dress up play; skirts and dresses for children; dance costumes for children; shrugs for children
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).
In this case, the applicant’s mark is similar in sound, appearance, and commercial impression. Both marks begin with the wording DIZZY, which is spelled and pronounced the same way in each mark. Moreover, the wording creates the same commercial impression when used in connection to clothing items, namely, that the clothing make one feel giddy or amazing. See evidence at http://www.merriam-webster.com/dictionary/dizzy, http://www.lexico.com/en/definition/dizzy, and http://www.ahdictionary.com/word/search.html?q=dizzy.
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). In this case, when a consumer focuses on the first wording in the applied-for and registered marks, the consumer will be focusing on the same wording that creates the same commercial impression.
Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording DRESS in registered mark is merely descriptive of or generic for the registrant’s “costumes for use in children's dress up play” and “skirts and dresses for children.” Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording DIZZY the more dominant element of the mark.
Because the marks are similar in sound, appearance, and commercial impression, the marks are confusingly similar.
Relatedness of the Goods
In this case, the applicant’s goods are commonly provided by the same parties, under the same marks, and through the same trade channels. See third party evidence at http://www2.hm.com/en_us/index.html (offering skirts and dresses for girls, hats, sandals, shirts, shorts, sweatpants, sweatshirts, underwear, flip flops, hoodies, sports bras, tank tops, thong underwear, hooded sweatshirts, and tee shirts under the H&M mark and providing them through the same trade channels), http://oldnavy.gap.com/ (offering skirts and dresses for girls, hats, sandals, shirts, shorts, sweatpants, sweatshirts, underwear, flip flops, hoodies, sports bras, tank tops, hooded sweatshirts, and tee shirts under the OLD NAVY mark and providing them through the same trade channels), and http://www.gap.com/ (offering skirts and dresses for girls, hats, sandals, shirts, shorts, sweatpants, sweatshirts, underwear, flip flops, hoodies, sports bras, tank tops, thong underwear, hooded sweatshirts, and tee shirts under the GAP mark and providing them through the same trade channels). Therefore, because the goods identified by the applicant and registrant are commonly provided by the same parties, under the same marks, through the same trade channels, the goods are considered related.
Because the applicant’s mark is confusingly similar to the registrant’s mark, and because the applicant’s goods are related to the goods of the registrant, a likelihood of confusion exists and registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to 2(d) Refusal
RESPONSE GUIDELINES
Response guidelines. 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.
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.
/Mark S. Tratos/
Mark S. Tratos
Trademark Examining Attorney
Law Office 113
(571) 270-3575
Mark.Tratos@uspto.gov
RESPONSE GUIDANCE