To: | Rikkel Corp (jr@theamazonlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90062444 - COMFY - N/A |
Sent: | November 10, 2020 09:16:31 AM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90062444
Mark: COMFY
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Correspondence Address:
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Applicant: Rikkel Corp
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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: November 10, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark COMFY (in standard characters) for “Plastic cups; Plastic plates; Plastic household gloves; Plastic household storage containers for salad; Plastic storage containers for household or domestic use; Plastic storage containers for household use; Plastic storage containers for domestic use; Drinking straws of plastic; Paper and plastic cups” in International Class 21. The mark in U.S. Registration No. 5696001 is COMFY COTTAGE (in standard characters) for “All purpose portable household containers; Baskets of wicker, metal, wood, cloth for household purposes; Collapsible fabric storage container for domestic use; Decorative centerpieces of china, terra cotta, earthenware, glass, porcelain, ceramic; General purpose storage bins for household use; Laundry hampers for domestic or household use; Picnic baskets sold empty; Plastic storage containers for household or domestic use; Sculptures of china, crystal, earthenware, terra cotta, glass, porcelain; Wine glasses; Baskets for household purposes; Beverage glassware; Collapsible storage containers for domestic use; Insulated bags for food or beverage for domestic use; Laundry baskets” in International Class 21. The mark in U.S. Registration No. 5762829 is COMFYSAIL (stylized) for “Bath sponges; Cleaning brushes for household use; Cleaning cloth; Clothes pegs; Cocktail shakers; Cold packs used to keep food and drink cold; Containers for household or kitchen use; Cosmetic brushes; Drinking straws; Fitted vanity cases; Ice cube moulds; Mangers for animals; Manual cosmetic cleaners, namely, non-woven fabric wipes and sponges; Non-electric kettles; Perfume burners; Portable ice chests for food and beverages; Rags for cleaning; Soap holders and boxes; Thermal insulated bags for food or beverages; Wine buckets” in International Class 21.
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. 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
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).
Applicant has applied to register the mark COMFY in standard characters. The mark in U.S. Registration No. 5696001 is COMFY COTTAGE, also in standard characters. The mark in U.S. Registration No. 5762829 is COMFYSAIL in stylized form.
It should first be noted that when evaluating a composite mark consisting of words and a design or stylization, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In the present case, that means that it is the wording in U.S. Registration No. 5762829 that is dominant over the stylization of the letters. With regard to the wording itself, not only is wording dominant in general, but certain wording can be considered more dominant than others. 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”).
The first part of both registered marks is the word “COMFY”, which is identical to the entirety of the applied-for mark. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Therefore, the marks are identical in part, and highly similar in terms of connotation and overall commercial impression.
Similarity of the Goods
Applicant has identified for “Plastic cups; Plastic plates; Plastic household gloves; Plastic household storage containers for salad; Plastic storage containers for household or domestic use; Plastic storage containers for household use; Plastic storage containers for domestic use; Drinking straws of plastic; Paper and plastic cups” in International Class 21. The mark in U.S. Registration No. 5696001 is for “All purpose portable household containers; Baskets of wicker, metal, wood, cloth for household purposes; Collapsible fabric storage container for domestic use; Decorative centerpieces of china, terra cotta, earthenware, glass, porcelain, ceramic; General purpose storage bins for household use; Laundry hampers for domestic or household use; Picnic baskets sold empty; Plastic storage containers for household or domestic use; Sculptures of china, crystal, earthenware, terra cotta, glass, porcelain; Wine glasses; Baskets for household purposes; Beverage glassware; Collapsible storage containers for domestic use; Insulated bags for food or beverage for domestic use; Laundry baskets” in International Class 21. The mark in U.S. Registration No. 5762829 is for “Bath sponges; Cleaning brushes for household use; Cleaning cloth; Clothes pegs; Cocktail shakers; Cold packs used to keep food and drink cold; Containers for household or kitchen use; Cosmetic brushes; Drinking straws; Fitted vanity cases; Ice cube moulds; Mangers for animals; Manual cosmetic cleaners, namely, non-woven fabric wipes and sponges; Non-electric kettles; Perfume burners; Portable ice chests for food and beverages; Rags for cleaning; Soap holders and boxes; Thermal insulated bags for food or beverages; Wine buckets” in International Class 21.
In this case, the registrations use broad wording to describe “All purpose portable household containers; Beverage glassware; Containers for household or kitchen use,” which presumably encompasses all goods of the type described, including applicant’s more narrow household goods. 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.
Summary
In sum, applicant’s mark is identical in part and highly similar in connotation and overall commercial impression to both of the registered marks. In addition, applicant’s goods are similar to the goods identified in the registrations. Thus, it is likely consumers will mistakenly believe the goods emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied to register the mark COMFY (in standard characters) for “Plastic cups; Plastic plates; Plastic household gloves; Plastic household storage containers for salad; Plastic storage containers for household or domestic use; Plastic storage containers for household use; Plastic storage containers for domestic use; Drinking straws of plastic; Paper and plastic cups” in International Class 21.
The attached Internet dictionary evidence from Lexico.com shows that “comfy” means “comfortable.” Thus, this term is merely descriptive of applicant’s goods, in that the household items are comfortable to use.
In sum, applicant’s mark is merely descriptive because it describes a characteristic of applicant’s goods and consumers are likely to perceive the proposed mark as describing a characteristic of the goods rather than the source of the goods.
Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Applicant should note the following potential grounds for refusal.
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.
For this application to proceed, applicant must explicitly address each refusal and potential refusal 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.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov
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