United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88567670
Mark: DAYBREAK
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Correspondence Address: |
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Applicant: The Content Agency, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: November 14, 2019
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL AS TO INTERNATIONAL CLASSES 5, 21 25, & 32 ONLY
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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 DAYBREAK for Aromatic oils; Colognes, perfumes and cosmetics; Eyewear cleaning kits comprised of cleaning fluid and a cleaning cloth; Sun-block lotions, for Herbal extracts for medical purposes; Herbal tinctures for medical purposes, for Eyewear; Eyewear cases; Sunglasses; Cases for spectacles and sunglasses, Vaporizers for medical purposes, for Stationery; Stickers; Organizers for stationery use, for Athletic bags; Duffel bags; Leather bags; Messenger bags; Shoulder bags, for Mugs; Coffee mugs; Cups and mugs, for Towels; Beach towels; Golf towels; Hand towels; Terry towels, for Beanies; Belts for clothing; Jackets; Socks; Sweatshirts; T-shirts; Underwear; Baseball caps and hats, for Concentrates and powders used in the preparation of energy drinks and fruit-flavored beverages; Sports drinks, namely, energy drinks, for Alcoholic energy drinks, & for Electronic cigarettes and oral vaporizers for smokers; Lighters for smokers; Matches; Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Smokeless cigarette vaporizer pipe.
Registrants’ marks are DAYBREAK CAMO, U.S. Registration No. 5005773 for Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Footwear, in International Class 25, DAYBREAK, U.S. Registration No. 3968622 for Fruit juices, fruit drinks; fruit flavored non-alcoholic beverages, Fruit concentrates used as ingredients of beverages, Non-alcoholic cocktail mixes, and Mixes for making fruit flavored drinks, DAYBREAK, U.S. Registration No. 2015846 for meal replacement in powder or liquid form, & DAYBREAK, U.S. Registration No. 1818111 for coffee.
DAYBREAK CAMO, U.S. Registration No. 5005773 – likelihood of confusion refusal as to international class 25 only: The applicants’ mark features part of registrant’s mark, namely, DAYBREAK. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. 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.
Additionally, the goods of the applicant and registrant are identical in part, namely, hats and related in part, namely, diverse clothing items. Neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).
The examining attorney attaches evidence in the nature of Trademark Registrations featuring the applicant and registrant’s goods. The evidence is intended to support a likelihood of confusion with respect to this class.
DAYBREAK, U.S. Registration No. 3968622 – likelihood of confusion refusal as to international class 32 only: The marks are identical and the goods are related in that both parties offer beverages among which are also fruit flavored beverages. In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is DAYBREAK and registrant’s mark is DAYBREAK. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
The examining attorney attaches evidence in the nature of Trademark Registrations featuring the applicant and registrant’s goods. The evidence is intended to support a likelihood of confusion with respect to this class.
DAYBREAK, U.S. Registration No. 2015846 – likelihood of confusion refusal as to international class 5 only: The marks are identical and the goods are complementary in that both parties offer goods intended for one’s health and well-being.
The examining attorney attaches evidence in the nature of Trademark Registrations featuring the applicant and registrant’s goods. The evidence is intended to support a likelihood of confusion with respect to this class.
DAYBREAK, U.S. Registration No. 1818111– likelihood of confusion refusal as to international class 21 only: The marks are identical and the goods are complementary in that both parties offer goods intended for coffee consumption, namely, mugs and coffee.
The examining attorney attaches evidence in the nature of Trademark Registrations featuring the applicant and registrant’s goods. The evidence is intended to support a likelihood of confusion with respect to this class.
The goods of the applicant and registrants are likely to travel through the same channels of trade and they are likely to be encountered by the same consumers. Those consumers, when coming across the goods are likely to believe that they derive from the same and not from different sources. Therefore, likelihood of confusion may occur.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).
Therefore, for the reasons listed above registration is refused under section 2(d) of the Trademarks Act.
PRIOR PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Blandu, Florentina/
Examining Attorney
U.S. Patent & Trademark Office
L.O.117
Florentina.Blandu@uspto.gov
Tel 571-272-9128
Fax 571-273-9128
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