To: | Kids Fun TV, LLC (tm-slc@stoel.com) |
Subject: | U.S. Trademark Application Serial No. 90085751 - KIDS FUN TV - 70701/2:1 |
Sent: | March 01, 2021 02:09:12 PM |
Sent As: | ecom124@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. 90085751
Mark: KIDS FUN TV
|
|
Correspondence Address: 201 SOUTH MAIN STREET, SUITE 1100
|
|
Applicant: Kids Fun TV, LLC
|
|
Reference/Docket No. 70701/2:1
Correspondence Email Address: |
|
FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 01, 2021
This Office action is in response to applicant’s communication filed on February 10, 2021.
In a previous Office action dated November 20, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and services and disclaim descriptive wording in the mark.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: definite amended identification provided and disclaimer statement provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is KIDS FUN TV in standard characters for, in relevant part, “Shirts; t-shirts; sweatshirts; hats; beanies; bandanas; caps being headwear; 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 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” in Class 028.
Registrant’s mark for Registration No. 2276703 is KID FUN in typed drawing 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 for, in relevant part, “Clothing, namely, shoes; t-shirts, shorts, sweat shirts, sweat pants, sweat shorts; and headwear, namely, hats and caps” in Class 025.
Registrant’s mark for Registration No. 5405592 is KIDSFUN in stylized form “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”.
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
Applicant’s goods are, in relevant part, “Shirts; t-shirts; sweatshirts; hats; beanies; bandanas; caps being headwear; 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 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” 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 application uses broad wording to describe small 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 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.
Registrant’s goods for Registration No. 4732922 are, in relevant part, “Clothing, namely, shoes; t-shirts, shorts, sweat shirts, sweat pants, sweat shorts; and headwear, namely, hats and caps” in Class 025. Both applicant’s list of goods and registrant’s list of goods include shirts, sweatshirts, hats and caps. Further, neither the application nor the registration contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii). Therefore, the goods are closely related.
Registrant’s goods for Registration No. 5405592 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).
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 KIDSFUN in stylized wording.
In the present case, the marks are identical in part and applicant’s mark encompasses elements of all of the registrant’s mark. Therefore, the marks create similar commercial impressions.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that various combination of the wording KID(S), FUN, or TV is weak or diluted.
Further, the third party registrations that applicant submitted for the goods in Class 025 are irrelevant because the shared term between applicant’s mark and the cited registration are FUN TV, however, the third party registrations include the words KIDS and TV.
With regards to the third party registrations applicant submitted for the goods in Class 028, the two other registrations are transposition of the words at issue, and create a different meaning, thus, are irrelevant.
The mark FUN TV, as it relates to the goods in Class 025, is arbitrary. Applicant has disclaimed the wording KID because it is descriptive of the intended user of applicant’s goods and services. Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the wording FUN TV is the dominant portion of applicant’s mark, as it relates to applicant’s goods in Class 025. The dominant portion of applicant’s mark is identical to registrant’s mark for Registration No. 4732922.
Therefore, consumers will be confused as to the source of the goods.
Proper Response to Final Action
In such case, the application will proceed for the following classes only: Classes 016 and 041.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Janet Lee
/Janet H. Lee/
Trademark Examining Attorney
Law Office 124
Phone: (571) 272-1053
Email: janet.lee6@uspto.gov
RESPONSE GUIDANCE