To: | Lovepixart, LLC (pmeles@bellsouth.net) |
Subject: | U.S. Trademark Application Serial No. 90175233 - PIXART BE THE ARTIST - Pixart 16&28 |
Sent: | January 29, 2021 10:54:25 PM |
Sent As: | ecom122@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90175233
Mark: PIXART BE THE ARTIST
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Correspondence Address:
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Applicant: Lovepixart, LLC
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Reference/Docket No. Pixart 16&28
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: January 29, 2021
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4270327. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register the mark PIXART BE THE ARTIST in a stylized format with heart design for “Art prints comprised of digital illustrations originating from photographs; Graphic art reproductions” in class 016 and “Puzzles; Mosaic puzzles” in class 028.
The mark in Registration No. 4270327 is PIXARTPRINTING in standard character format for in pertinent part “graphic prints and representations; photographs; graphic art reproductions; pictures, framed or unframed” in class 016.
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.
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 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).
In this case, applicant’s mark PIXART BE THE ARTIST is confusingly similar to the mark PIXARTPRINTING in Registration No. 4270327. Specifically, PIXART in applicant’s mark is highly similar in sound and appearance to the PIXART in registrant’s mark in Registration No. 4270327.
Moreover, when evaluating a composite mark consisting of words and a design, 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)). Even though applicant’s mark has a design, the dominant portion of the mark is the word portion, which is PIXART BE THE ARTIST.
Furthermore, registrant’s mark PIXARTPRINTING is in standard character format, which means the registrant can put their mark in any design, therefore, applicant’s design elements do not rule out the similarity of the phrase PIXART in the marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In summary, because of the contemporaneous use of the distinctive phrase PIXART, it follows that purchasers are likely to believe that the marks identify the same source for graphic art reproduction, photograph, picture, art print, graphic print and puzzle goods. Thus, the marks are confusingly similar.
Comparison of the Goods
The applicant’s goods are “Art prints comprised of digital illustrations originating from photographs; Graphic art reproductions” in class 016 and “Puzzles; Mosaic puzzles” in class 028.
The registrant’s goods in Registration No. 4270327 are in pertinent part “graphic prints and representations; photographs; graphic art reproductions; pictures, framed or unframed” in class 016.
As the case law and attached evidence shows, the applicant's art print, graphic art reproduction and puzzle goods and registrant’s graphic print, photograph, graphic art reproduction and picture goods in Registration No. 4270327 are commercially related, because applicant and registrant provide the identical goods of “graphic art reproductions” and many companies provide these types of goods.
In this case, the goods of “graphic art reproductions” in the application and registration are identical. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s graphic art reproduction goods are related.
Moreover, the attached Internet evidence consists of screenshots from Canvas Champ, Minted and Shutterfly. See http://www.canvaschamp.com/photo-puzzles, http://www.canvaschamp.com/photo-prints, http://www.canvaschamp.com/pop-art-on-canvas, http://www.canvaschamp.com/panoramic-canvas-photo-prints, http://www.minted.com/puzzles, http://www.minted.com/art, http://www.minted.com/photo-art, http://www.shutterfly.com/photo-gifts/puzzles and http://www.shutterfly.com/prints?esch=1. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Accordingly, purchasers are likely to be confused as to the source of the goods when they encounter graphic art reproduction, photograph, picture, art print, graphic print and puzzle goods offered under highly similar marks. Therefore, applicant's goods and registrant's goods are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the goods are related. Therefore, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
MARK DESCRIPTION REQUIREMENT
The following description is suggested, if accurate:
The mark consists of a stylized heart comprised of multiple touching diamonds and in the center of each diamond is a circle and underneath the heart design is the wording “PIXART” in a stylized font with the wording “BE THE ARTIST” in a stylized font centered below the wording “PIXART”.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement 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.
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE