To: | Jackson Janis (jrb@jrblaw.com) |
Subject: | U.S. Trademark Application Serial No. 90127862 - CERULEAN - CERULEAN-1 |
Sent: | December 22, 2020 04:50:16 PM |
Sent As: | ecom109@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90127862
Mark: CERULEAN
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Correspondence Address:
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Applicant: Jackson Janis
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Reference/Docket No. CERULEAN-1
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: December 22, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
--Section 2(d) Refusal Based on Likelihood of Confusion
--Identification and Classification of Goods and Services
Section 2(d) Refusal Based on Likelihood of Confusion - Partial
This refusal applies to the following goods only: “clothing; headwear; footwear; fashion accessories; yoga clothing”.
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.
In a likelihood of confusion determination, 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).
Comparison of the Marks
In the present case, applicant’s mark is “CERULEAN” and registrants’ marks are “CERULEANHOME” and “CERULEAN LIVING”. Each mark begins with the identical word “CERULEAN”. The additional descriptive words in registrant’s marks “HOME” and “LIVING” do not alter the commercial impression of the marks. 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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Therefore, the marks are confusingly similar.
Relatedness of the Goods and/or Services
Applicant’s goods and/or services are: musical recordings; musical sound recordings; downloadable musical sound recordings; audio and video recordings featuring music and artistic performances; entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all via a global computer network; clothing; headwear; footwear; fashion accessories; paper goods; paper materials; posters; bags; towels; mugs and cups; water bottles; bowls; writing utensils; pens; pencils; yoga accessories; yoga equipment; yoga mats; yoga clothing; jewelry
And
Registrant’s goods are:
Reg. No. 6112636 (CERULEANHOME): Bed sheets; Bed skirts; Duvet covers; Duvets; Fitted bed sheets; Flannel; Flat bed sheets; Pillow cases; Pillow shams; Polyester fabric; Quilt covers; Shams; Sheet sets; Velvet; Woven fabrics and knitted fabrics
Applicant’s towels are related to registrant’s goods. Bedroom linens and towels travel in the same channels of trade to the same consumers. Furthermore, registrant’s goods “woven fabrics” is broadly stated and could include applicant’s more narrow identification of “towels”.
Reg. No. 6147112 (CERULEAN LIVING): Bandanas
Applicant provides clothing, headwear and fashion accessories. Registrant’s bandanas can be used as clothing, headwear and fashion accessories.
Accordingly, registration must be refused based on likelihood of confusion under Section 2(d) of the Trademark Act.
Identification and Classification of Goods and Services
Additionally, applicant has classified the following goods and/or services in International Class 009: “entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all via a global computer network; clothing; headwear; footwear; fashion accessories; paper goods; paper materials; posters; bags; towels; mugs and cups; water bottles; bowls; writing utensils; pens; pencils; yoga accessories; yoga equipment; yoga mats; yoga clothing; jewelry”. However, the proper classification for each item listed below.
Additionally, applicant has provided the application fee(s) for only 1 international class. Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86(a).
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Applicant may substitute the following wording, if accurate:
Class 009: musical recordings; musical sound recordings; downloadable musical sound recordings; audio and video recordings featuring music and artistic performances;
Class 014: Jewelry; Fashion accessories in the nature of costume jewelry
Class 016: paper goods, namely, ____ {specify, e.g. cardboard cartons}; paper materials, namely, ____ {specify, e.g. printed invitations}; posters; writing utensils; pens; pencils;
Class 018: Traveling bags;
Class 021: mugs and cups; water bottles sold empty; bowls;
Class 024: towels
Class 025: clothing, namely, ___{specify e.g. shirts, trousers, dresses, etc.}; headwear; footwear; yoga clothing, namely, ____{specify e.g. shirts, pants, etc.}; fashion accessories, namely, ____{scarves, etc.}
Class 027: Yoga mat
Class 028: yoga accessories, namely,____{specify, e.g. yoga gloves, yoga blankets, etc.}; yoga equipment, namely, ___{specify, e.g. yoga cushions, yoga blocks, yoga boards, etc.}
Class 041: entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all via a global computer network;
Guidelines to Amending the Identification of Goods and/or Services
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
Multiple Class Applications
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 10 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
/Kathleen Lorenzo/
Kathleen Lorenzo
Trademark Examining Attorney
Law Office 109
Kathleen.Lorenzo@uspto.gov
571-272-5883
RESPONSE GUIDANCE