Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 20, 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.

 

This application was filed with the USPTO on July 31, 2020.

 

SUMMARY OF ISSUES:

 

• Likelihood of confusion refusal made under Trademark Act Section 2(d)
• Identification of goods and services
• Disclaimer

 

Section 2(d) Refusal – Likelihood of Confusion

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 025 and 028 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2276703, 4732922, and 5404592.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is KIDS FUN TV in standard characters for, in relevant part, “Shirts; t-shirts; sweatshirts; hats; beanies; bandanas; caps; aprons” in Class 025 and “Toys, namely, action figure toys, action figures, action figures and accessories therefor, collectable toy figures, dolls, doll accessories, doll clothing, dolls and accessories therefor, furniture for dolls' houses, plastic dolls, play figures, play houses, play houses and toy accessories therefor, pet toys, plastic character toys, play sets for action figures, playset buildings, playsets for dolls, plush dolls, plush toys, positionable toy figures, stuffed and plush toys, stuffed dolls and animals, stuffed toys, stuff toy animals, toy action figures, toy action figures and accessories therefor, toy figures, toy cars, toy houses, and vinyl dolls; balls for games” in Class 028.

 

Registrant’s mark for Registration No. 2276703 is KID FUN in standard characters for “small toys in the nature of carnival, gift or party favor items”.

 

Registrant’s mark for Registration No. 4732922 is FUN TV in standard characters, in relevant part, for “Clothing, namely, shoes; t-shirts, shorts, sweat shirts, sweat pants, sweat shorts; and headwear, namely, hats and caps”.

 

Registrant’s mark for Registration No. 5404592 is KIDSFUN in stylized wording for “Batting gloves; Toy pistols; Electronic action toys; Toy building blocks; Jigsaw puzzles; Magic tricks; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Dolls; Electric action toys; Inflatable swimming pools; Radio-controlled toy vehicles; Balls for sports; Body-building apparatus; Archery implements; Board games”.

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 Goods/Services

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

Applicant’s goods are, in relevant part, “Shirts; t-shirts; sweatshirts; hats; beanies; bandanas; caps; aprons” in Class 025 and “Toys, namely, action figure toys, action figures, action figures and accessories therefor, collectable toy figures, dolls, doll accessories, doll clothing, dolls and accessories therefor, furniture for dolls' houses, plastic dolls, play figures, play houses, play houses and toy accessories therefor, pet toys, plastic character toys, play sets for action figures, playset buildings, playsets for dolls, plush dolls, plush toys, positionable toy figures, stuffed and plush toys, stuffed dolls and animals, stuffed toys, stuff toy animals, toy action figures, toy action figures and accessories therefor, toy figures, toy cars, toy houses, and vinyl dolls; balls for games” in Class 028.

 

Registrant’s goods for Registration No. 2276703 are “small toys in the nature of carnival, gift or party favor items”.  In this case, the registration uses broad wording to describe small types of toys, which presumably encompasses all goods of the type described, including applicant’s more narrow “Toys, namely, action figure toys, action figures, action figures and accessories therefor, collectable toy figures, dolls, doll accessories, doll clothing, dolls and accessories therefor, furniture for dolls' houses, plastic dolls, play figures, play houses, play houses and toy accessories therefor, pet toys, plastic character toys, play sets for action figures, playset buildings, playsets for dolls, plush dolls, plush toys, positionable toy figures, stuffed and plush toys, stuffed dolls and animals, stuffed toys, stuff toy animals, toy action figures, toy action figures and accessories therefor, toy figures, toy cars, toy houses, and vinyl dolls; balls for games”.  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 applicant has 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.

 

Registrant’s goods for Registration No. 4732922 are, in relevant part, for “Clothing, namely, shoes; t-shirts, shorts, sweat shirts, sweat pants, sweat shorts; and headwear, namely, hats and caps”.  Both applicant’s list of goods and registrant’s list of goods include shirts, sweatshirts, hats and caps.  Therefore, the goods are closely related.

 

Registrant’s goods for Registration No. 5404592 are “Batting gloves; Toy pistols; Electronic action toys; Toy building blocks; Jigsaw puzzles; Magic tricks; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Dolls; Electric action toys; Inflatable swimming pools; Radio-controlled toy vehicles; Balls for sports; Body-building apparatus; Archery implements; Board games”.  Both list of goods include action toys, dolls, and balls for sports.  Thus, the goods are closely related.

 

Comparison of 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).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). 

 

Applicant’s mark is KIDS FUN TV in standard characters.

 

Registrant’s mark for Registration No. 2276703 is KID FUN in standard characters.

 

Registrant’s mark for Registration No. 4732922 is FUN TV in standard characters.

 

Registrant’s mark for Registration No. 5404592 is KIDSFUN in stylized wording.

 

In the present case, the marks are identical in part and applicant’s mark encompasses elements of all of the registrants’ marks.

 

Therefore, the marks create similar commercial impressions.

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Therefore, consumers will be confused as to the source of the goods.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

Identification of Goods and Services

 

The identification of goods is indefinite and must be clarified because the wording “books” must be further specified as to the subject matter of the books.  The wording “sticker kits” must be further specified as to the components of the kits.  The wording “caps” must be specified that they are headwear.  The wording “stuffed animals” should be clarified that they are “stuffed toy animals” so that they are not confused with taxidermy.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification of services is indefinite and must be clarified because the wording “family friendly entertainment” in “Entertainment services, namely, an ongoing series featuring family friendly entertainment provided through a global computer network; entertainment services, namely, ongoing webisodes featuring family friendly entertainment provided through a global computer network” is not specific enough to indicate subject matter.  The wording “providing videos featuring action, not downloadable” is unclear as to the subject matter being featured..  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 016:  Books in the field of {indicate subject matter}; sticker kits comprising {specify components, e.g., stickers, sticker books}; sticker books; stickers; activity books

 

Class 025:  Shirts; t-shirts; sweatshirts; hats; beanies; bandanas; caps being headwear; aprons

 

Class 028:  Toys, namely, action figure toys, action figures, action figures and accessories therefor, collectable toy figures, dolls, doll accessories, doll clothing, dolls and accessories therefor, furniture for dolls' houses, plastic dolls, play figures, play houses, play houses and toy accessories therefor, pet toys, plastic character toys, play sets for action figures, playset buildings, playsets for dolls, plush dolls, plush toys, positionable toy figures, stuffed and plush toys, stuffed dolls and stuffed toy animals, stuffed toys, stuff toy animals, toy action figures, toy action figures and accessories therefor, toy figures, toy cars, toy houses, and vinyl dolls; balls for games

 

Class 041:  Entertainment services, namely, an ongoing series featuring family friendly entertainment in the nature of {specify subject matter, e.g., variety, news, comedy, game shows} provided through a global computer network; entertainment services, namely, ongoing webisodes featuring family friendly entertainment in the nature of {specify subject matter, e.g., variety, news, comedy, game shows} provided through a global computer network; production of humorous videos for the Internet; providing videos featuring action movies, not downloadable.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Disclaimer

 

Applicant must disclaim the wording “KIDS” for all classes and the wording “TV” for Classes 016 and 041 because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from the American Heritage Dictionary of the English Language shows the wording KID means “A child” and the wording TV means “Television”.  Thus, the wording KID describes the intended user of applicant’s goods and services, and the wording TV describes the subject matter of applicant’s goods in Class 016 and the type of applicant’s services in Class 041.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use the wording “KIDS” for International Classes 016, 025, 028, and 041 and the wording “TV” for International Classes 016 and 041 apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

Janet Lee

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee6@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 20, 2020 for

U.S. Trademark Application Serial No. 90085751

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Janet Lee

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee6@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 20, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”