To: | Jones, Paul R. (cgntmdocket@shb.com) |
Subject: | U.S. Trademark Application Serial No. 90018238 - BUYMIAD - 42254.344533 |
Sent: | October 14, 2020 11:00:09 AM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90018238
Mark: BUYMIAD
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Correspondence Address:
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Applicant: Jones, Paul R.
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Reference/Docket No. 42254.344533
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: October 14, 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. 3996959. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied-for mark is BUYMIAD in standard characters for “Agricultural products, animal products, artisan products, automotive vehicles, parts and supplies, bath and beauty products, batteries, beer, beverages, building materials, books, chemicals, cleaning preparations and products, clothing, communication devices, computers, cordage and fibers, cosmetics, educational material and devices, electrical products, electrical and scientific apparatus, electronic devices, entertainment products, eyewear, fabrics, fancy goods, firearms, floor coverings, food, footwear, fragrances, furniture, games, giftware, handmade craft products, hardware, hand tools, hand instruments, headgear, health products, home decor products and home accessories, house and garden products, house wares and glass, industrial equipment, jewelry, leather goods, lighting products, lubricants and fuels, machinery, medical apparatus, medical equipment, metal goods, mirrors, mobile devices, mobile applications, needles, musical instruments, kitchen and bath products, ornaments, packaging, paints, paper goods and printed matter, pharmaceutical products, plants, plumbing products, office equipment, robotics, rubber goods, sacks and bags, seeds, sewing supplies, smokers' articles, software, special textiles, sporting goods, textile materials, telecommunication products, tools, toys, vehicles, wines and spirits, and yarns and threads” in Class A.
Reg. No. 3996959 is MIAD in standard characters for “Tea and tea based products, namely, mixes in the nature of concentrates, syrups, granules and powders” in Class 030.
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
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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
The applied-for mark is BUYMIAD in standard characters.
Reg. No. 3996959 is MIAD in standard characters.
As a result, the applied-for mark and registrant’s mark are confusingly similar.
Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods and/or services despite some differences.
Relatedness of the Goods and/or Services
Applicant’s goods are identified as “Agricultural products, animal products, artisan products, automotive vehicles, parts and supplies, bath and beauty products, batteries, beer, beverages, building materials, books, chemicals, cleaning preparations and products, clothing, communication devices, computers, cordage and fibers, cosmetics, educational material and devices, electrical products, electrical and scientific apparatus, electronic devices, entertainment products, eyewear, fabrics, fancy goods, firearms, floor coverings, food, footwear, fragrances, furniture, games, giftware, handmade craft products, hardware, hand tools, hand instruments, headgear, health products, home decor products and home accessories, house and garden products, house wares and glass, industrial equipment, jewelry, leather goods, lighting products, lubricants and fuels, machinery, medical apparatus, medical equipment, metal goods, mirrors, mobile devices, mobile applications, needles, musical instruments, kitchen and bath products, ornaments, packaging, paints, paper goods and printed matter, pharmaceutical products, plants, plumbing products, office equipment, robotics, rubber goods, sacks and bags, seeds, sewing supplies, smokers' articles, software, special textiles, sporting goods, textile materials, telecommunication products, tools, toys, vehicles, wines and spirits, and yarns and threads” in Class A.
Registrant’s goods are identified as “Tea and tea based products, namely, mixes in the nature of concentrates, syrups, granules and powders” in Class 030.
In this case, the application uses broad wording to describe beverages, artisan products , food, etc. which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow identification teas and tea based products. 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 and/or services 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 and/or services are related.
Thus, applicant’s and registrant’s goods and/or services 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).
Conclusion
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).
In summary, applicant’s and registrant’s marks create the same commercial impression and the respective goods and/or services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that the goods and/or services originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
RESPONSE TO OFFICE ACTION
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) Applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office Action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
/Jami E. Holland/
Jami E. Holland
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7806
RESPONSE GUIDANCE