To: | Trucenta Holdings LLC (paulrhofferlaw@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90292558 - BREEZE - 2018.2020 |
Sent: | March 16, 2021 09:57:26 PM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90292558
Mark: BREEZE
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Correspondence Address:
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Applicant: Trucenta Holdings LLC
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Reference/Docket No. 2018.2020
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: March 16, 2021
The assigned examining attorney has reviewed the referenced application and determined the following.
REGISTRATION
Likelihood of Confusion – International Class 14
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5075566. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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.
The proposed mark is closely related to the prior registered mark in each of the factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. Applicant’s mark is BREEZE with stylized letters E. Registrant’s mark is BREEZE. The word portion of the marks are identical.
Applicant offers ornamental lapel pins; registrant offers a wide variety of jewelry including ornamental pins. The goods are overlapping. Consumers, therefore, are likely to believe that the goods of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. Applicant may, however, offer evidence in support of registration.
Likelihood of Confusion – International Class 21
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.
The proposed mark is closely related to the prior registered marks in each of the factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. Applicant’s mark is BREEZE with stylized letters E. Registrant’s marks are BREZZA (6048899) and BRIZA (5310330). The terms BREZZA and BRIZA mean “breeze”. The marks are foreign equivalents and carry a highly similar overall commercial impression.
Applicant offers Containers for household use; Insulating sleeve holders for beverage cans; Plastic storage containers for domestic use; Plastic storage containers for household use; Portable coolers, non-electric; the registrants offer Household kitchen goods and food preparation goods, namely, spatulas, cutting boards, mixing bowls, mixing spoons, mixing cups; drinking cups and mugs; water bottles sold empty; portable non-electric drinking water dispensers; heat-insulated containers for beverages; pitchers (6048899); and Dishes used in serving, drinking and eating food and beverages, namely, plates, bowls, cups, dinner plates, lunch plates, dessert plates, salad plates, side plates, service plates, cheese plates, tea plates, fruit plates, soup bowls, cereal bowls, pasta bowls, fruit bowls, dessert bowls, bouillon cups, coupe soup bowls, finger bowls, coffee cups, coffee cup saucers, demitasses saucers, cream soup bowl saucers, soup tureen, serving platters, ramekins, and casserole dishes (5310330). The goods are overlapping and found in the same channels of trade. Consumers, therefore, are likely to believe that the goods of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. Applicant may, however, offer evidence in support of registration.
Prior Pending Applications – International Classes 16, 18 and 34
The filing dates of pending U.S. Application Serial Nos. 90037620, 88943996, 90246820 and 90012117 precede applicant’s filing date. See attached referenced applications. If any of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant’s Response
Guidelines for responding are set forth below.
How to respond. Click to file a response to this nonfinal Office action.
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William Breckenfeld
Examining Attorney
Law Office 116
571-272-9133
Email: william.breckenfeld@uspto.gov
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