To: | Besos, Inc. (ndv@manningllp.com) |
Subject: | U.S. Trademark Application Serial No. 90078775 - CHATEAU HOUGHTON - N/A |
Sent: | November 22, 2020 08:56:17 AM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90078775
Mark: CHATEAU HOUGHTON
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Correspondence Address: MANING & KASS, ELLROD, RAMIREZ, TRESTER |
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Applicant: Besos, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 22, 2020
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On 11/17/20, the examining attorney and Natalya Vasyuk discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The stated refusal refers to the Class 25 goods and does not bar registration of the Class 4 and Class 21 goods.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4704075. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is CHATEAU HOUGHTON (standard characters) for “Robes” in International Class 25.
Registrant’s mark is HOUGHTON (standard characters) for “Clothing, namely, shirts, blouses, dresses, skirts, coats, pants, jackets, sweaters, headwear, footwear, belts for clothing, and gowns” in International Class 25.
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.
Comparison 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Because the marks are similar in sound, appearance, and commercial impression, a consumer who is familiar with registrant’s mark used on registrant’s goods is likely to mistakenly believe that applicant’s mark, used on applicant’s goods, indicates the same source. Therefore the marks are confusingly similar.
Comparison of the Goods
In sum, the marks are highly similar and the goods of the parties are closely related. As such, consumers encountering the marks of the parties in connection with the identified goods are likely to be confused as to the source of the goods. Accordingly, registration of the mark is refused pursuant to Trademark Act Section 2(d). 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for oppositionfor those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
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.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
VOLUNTARY DISCLAIMER WITHDRAWAL
How to respond. Click to file a response to this nonfinal Office action.
/Kyle Ingram/
Kyle Ingram
Attorney Advisor
Law Office 125
(571)272-5276
Kyle.ingram@uspto.gov
RESPONSE GUIDANCE