To: | Belleville Shoe Manufacturing Company (denkpatentlaw@earthlink.net) |
Subject: | U.S. Trademark Application Serial No. 90046171 - BELLEVILLE - N/A |
Sent: | October 22, 2020 07:40:14 PM |
Sent As: | ecom127@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90046171
Mark: BELLEVILLE
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Correspondence Address: 763 S. NEW BALLAS ROAD, SUITE 305
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Applicant: Belleville Shoe Manufacturing Company
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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: October 22, 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
Applicant’s mark is BELLEVILLE, for “use upon footwear, namely, boots”, in Class 25.
Registrant’s mark is BELLVILLE, for, in relevant part, “Online retail store services featuring meats and processed foods, namely, prepared chicken, prepared pork, prepared beef, prepared turkey, banana chips, pickled fruits, pickled vegetables, jellies, preserves, fruit preserves, fruit flavored butters, apple butter, cherry butter, pumpkin butter, sweet potato butter, peach butter, vegetable-flavored butters, nuts, snack foods, namely, nut-based snacks, trail mixes, candied nuts, roasted nuts, processed nuts, prepared nuts, dried-vegetables snack foods, snack food dips, food package combinations consisting primarily of meat and/or cheese, processed cheeses, pickled vegetables, clothing, namely, shirts, t-shirts, and ball caps, staple foods, namely, confectionary, candy, candy with nuts, candied nuts, pies and baked goods, sauces, BBQ sauce, spices, seasonings, rubs, salts and peppers”, in Class 35.
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 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.
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 BELLEVILLE and registrant’s mark BELLVILLE are phonetic equivalents; thus, the marks sound and appear similar, and convey a similar commercial impression. The marks have their differences, however, these differences do not obviate the likelihood of confusion.
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 marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Here, applicant’s mark BELLEVILLE and registrant’s mark BELLVILLE are phonetic equivalents, as the first wording BELLE in applicant’s mark, followed by –VILLE, is pronounced the same as the first wording in registrant’s mark, BELL, followed by –VILLE. The additional “E” in applicant’s mark does not change the sound of the mark, and the marks remain similar in terms of appearance and commercial impression.
Thus, when compared in their entireties, the marks are confusingly similar.
The goods an services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
Looking at the goods and services, applicant’s boots and registrant’s online retail store services featuring clothing are similar in that it is common for entities to provide boots as well as other types of clothing in their online retail stores, together under the same mark and in the same trade channels. The attached evidence from American Eagle, Brooks Brothers, and Ralph Lauren show entities that provide boots and other types of clothing, such as shirts, in an online retail store, together under the same mark and in the same trade channels.
Thus, applicant’s goods and registrant’s services are related.
Use of the confusingly similar marks in relation to the related goods and services would lead to a likelihood of confusion. Accordingly, given the similarity of applicant’s mark to registrant’s mark, and the related nature of the goods and services those marks identify, there is a likelihood of source confusion. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark to the purchasing public is a generally known location;
(2) The goods or services originate in the place identified in the mark; and
(3) The purchasing public would be likely to believe that the goods or services originate in the geographic place identified in the mark; that is, to make a goods-place or services-place association.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015).
First, the attached evidence from Columbia Gazetteer and Merriam-Webster Dictionary shows that BELLEVILLE is primarily a well-known geographic place, namely, a city in the southwest part of Illinois. This evidence shows that Belleville is a city east of St. Louis and has a population of approximately 45,000 people. http://www.columbiagazetteer.org/main/ViewPlace/4/13392; http://www.merriam-webster.com/dictionary/Belleville. Thus, BELLEVILLE is primarily a well-known geographic place.
Applicant’s application as well as applicant’s website, attached, indicates that the city and state of owner’s address is in Belleville, IL. http://www.bellevilleboot.com/index.php. Thus, applicant’s goods originate from Belleville, IL.
Third, the USPTO has long held that a goods-place or services-place association is presumed where (1) the location in the mark is generally known to the purchasing public, (2) the term’s geographical significance is its primary significance, and (3) the goods and/or services do, in fact, originate from the named location in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988) (finding a services-place association was presumed between applicant’s restaurant services and California because the services originated in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 850 (TTAB 1982) (finding a goods-place association was presumed between applicant’s t-shirts and Denver because the goods had their geographical origin in Denver); see also In re Nantucket, Inc., 677 F.2d 95, 102, 213 USPQ 889, 895 (C.C.P.A. 1982) (Nies, J., concurring) (“[W]e must start with the concept that a geographic name of a place of business is a descriptive term when used on the goods of that business. There is a public goods/place association, in effect, presumed.” (internal footnote removed)). Here, as shown above, BELLEVILLE is primarily a geographic place, and it is neither remote nor obscure. Additionally, applicant’s goods originate on the place named in the mark, and the geographic significance is the primary significance of the wording BELLEVILLE. Thus, a goods-services connection between the goods being provided and the geographic place in the mark is presumed.
Therefore, because all three prongs of the test have been met, the mark is primarily geographically descriptive under Section 2(e)(2) of the Trademark Act and registration on the Principal Register is refused.
SECTION 2(f) – ACQUIRED DISTINCTIVENESS – ADVISORY
Applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) if applicant has used the mark for a significant period of time in commerce that may lawfully be regulated by the U.S. Congress. See 15 U.S.C. §§1052(f), 1127; In re Etablissments Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985); TMEP §1212.08. Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States. TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999). Additionally, this use in commerce must be substantially exclusive and continuous for at least the five years prior to the date the amendment to Section 2(f) is requested. 15 U.S.C. §1052(f); TMEP §1212.05.
To amend the application to assert Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f), provide information regarding the length of use of the mark in commerce and/or dates of use, and include the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL
Specifically, the submitted specimen appears to be a black and white image with shading that shows a sample or a depiction of the applied-for mark affixed to the goods, rather than a picture of the actual goods themselves bearing the mark. Additionally, the image is not complete, such that it is not clear that the goods in the specimen are boots or are some other type of goods.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
MARK DRAWING REQUIREMENT
Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the applied-for mark on the drawing. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about changes to the mark in the drawing after the application filing date, see the Drawing webpage.
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.
/Josh Galante/
Joshua M. Galante
Trademark Examining Attorney
Law Office 127
571-272-4310
Josh.Galante@uspto.gov
RESPONSE GUIDANCE