United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90327010
Mark: VITA CABINETRY
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Correspondence Address:
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Applicant: Vita Cabinetry LLC
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Reference/Docket No. L542798895
Correspondence Email Address: |
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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: November 16, 2021
This Office action is in response to applicant’s communication filed on October 21, 2021.
In a previous Office action dated April 30, 2021, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with four registered marks. In addition, applicant was required to disclaim descriptive wording in the mark.
Based on applicant’s response, the trademark examining attorney notes that the disclaimer requirement has been satisfied. See TMEP §§713.02, 714.04.
In addition, applicant argues there is no likelihood of confusion because the compared marks and goods are dissimilar. Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Therefore, 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
Final refusal – Section 2(d) Refusal – Likelihood of Confusion
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 and differences in the marks.”); TMEP §1207.01.
Applicant’s applied-for mark is VITA CABINETRY in stylized text with a design for “[b]athroom vanities; [k]itchen cabinets” in International Class 20.
Registrant’s mark in U.S. Reg. No. 4280379 is VITA V in standard characters for, in relevant part, “furniture for house, office and garden; furniture, mirrors, picture frames” in International Class 20.
Registrant’s mark in U.S. Reg. No. 5070524 is VITA TALALAY in standard characters for, in relevant part, “furniture” in International Class 20.
Registrant’s mark in U.S. Reg. No. 5107366 is VITA in standard characters for, in relevant part, “furniture” in International Class 20, as well as additional goods in International Classes 1, 17, 22, and 27.
Registrant’s mark in U.S. Reg. No. 5505488 is VITA TALALAY ORIGINS in stylized text with a design for, in relevant part, “furniture” in International Class 20, as well as additional goods in International Classes 17 and 22.
The marks in U.S. Reg. Nos. 5070524, 5107366, and 5505488 are owned by entities that constitute a single-source.
Applicant’s and registrants’ marks are similar because the marks share identical, lead wording that serves as the dominant portion of each mark. In addition, the compared goods are legally identical and are commonly provided by the same entity.
Similarity 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).
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).
In the present case, the term VITA serves as the dominant portion of the applied-for (VITA CABINETRY) and registered marks in U.S. Reg. Nos. 4280379 (VITA V), 5070524 (VITA TALALAY), and 5505488 (VITA TALALAY ORIGINS) because it is the first term to appear in each mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, the compared marks are similar because they share identical, lead wording that serves as the dominant portion of the compared marks.
Although the applied-for mark (VITA CABINETRY) includes the additional term CABINETRY, this non-source identifying wording merely indicates the nature of applicant’s goods and has therefore been disclaimed. Disclaimed matter that is descriptive of or generic for a party’s goods 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). Similarly, the wording TALALAY in U.S. Reg. Nos. 5070524 (VITA TALALAY) and 5505488 (VITA TALALAY ORIGINS) has been disclaimed. As such, the additional wording in the applied-for and registered marks does not alter the dominant element analysis.
In response, applicant argues the design element of the applied-for mark (VITA CABINETRY) is more significant. However, 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)). Similarly, the design element in U.S. Reg. No. 5505488 (VITA TALALAY ORIGINS) does not alter the dominant element analysis or obviate the confusing similarity of the wording.
With respect to U.S. Reg. No. 5107366 (VITA), applicant has merely added the non-distinctive term CABINETRY to registrant’s mark to create the applied-for VITA CABINETRY mark. However, adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Furthermore, applicant argues the additional wording in the compared marks obviates a likelihood of confusion. Adding a term to a registered mark generally does not obviate the similarity between the compared marks nor does it overcome a likelihood of confusion under Section 2(d). See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009). The only exceptions are when (1) the matter common to the marks is merely descriptive or diluted, and not likely to be perceived by purchasers as distinguishing source, or (2) the compared marks in their entireties convey a significantly different commercial impression – neither of which is the case here. TMEP §1207.01(b)(iii); see, e.g., Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004).
In this case, the matter common to the marks is not merely descriptive or diluted because the shared wording VITA, which is the Latin word for “life,” does not describe the relevant furniture goods. See attached dictionary evidence from the Oxford Dictionary. Further, applicant has not provided evidence of dilution.
In addition, when comparing the marks in their entireties, the marks do not convey a significantly different commercial impression from the other because the marks share the identical, lead wording VITA that is more dominant in creating a commercial impression. Although all but one of the compared marks includes additional wording, the additional wording does not significantly alter the commercial impression of the compared marks. Rather, the additional generic and descriptive wording in the compared marks would likely be viewed by consumers as denoting the nature or a feature of goods from the same source. In particular, the additional non-source identifying wording CABINETRY in the applied-for mark (VITA CABINETRY) merely indicates the nature of the applied-for goods and is therefore insufficient to distinguish applicant’s mark. Similarly, the additional wording TALALAY in U.S. Reg. Nos. 5070524 (VITA TALALAY) and 5505488 (VITA TALALAY ORIGINS) is descriptive of a characteristic and feature of the goods, as applicant notes, and has been disclaimed. Therefore, this wording is less significant in creating a commercial impression. In addition, the letter V merely reinforces the dominant VITA wording in U.S. Reg. No. 4280379 (VITA V). Thus, the presence of the distinctive term VITA as the first word in applicant’s and registrants’ marks renders the marks similar in impression, especially in light of the additional wording in the compared marks, which does not sufficiently distinguish the marks.
Lastly, the compared goods are legally identical. As such, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Based on the foregoing, the applicant’s applied-for and registrants’ marks are sufficiently similar to find a likelihood of confusion.
Relatedness of the Goods
In response, applicant argues the compared goods are dissimilar because the wording TALALAY in U.S. Reg. Nos. 5070524 (VITA TALALAY) and 5505488 (VITA TALALAY ORIGINS) indicates that registrant’s goods are of talalay latex. However, determining likelihood of confusion is based on the description of the goods 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)). In the present case, registrant’s goods in in U.S. Reg. Nos. 5070524 (VITA TALALAY) and 5505488 (VITA TALALAY ORIGINS) are defined broadly and are not restricted in nature by the use of descriptive wording in the registered marks, as applicant argues.
In this case, the registrations use broad wording to describe “furniture,” which presumably encompasses all goods of the type described, including applicant’s more narrow “[b]athroom vanities; [k]itchen cabinets.” 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 registrants’ 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)).
Applicant asserts the compared goods are dissimilar because “furniture” is movable property, whereas “vanities” and “cabinets” are fixtures. With this, applicant contends registrants’ “furniture” does not encompass applicant’s “[b]athroom vanities” and “[k]itchen cabinets.” However, as shown by the previously and newly attached evidence from The Free Dictionary, the words “vanity,” “cabinet,” and “furniture,” are defined as follows:
Therefore, the previously and newly attached dictionary evidence establishes that applicant’s “[b]athroom vanities” and “[k]itchen cabinets” constitute “furniture.” As such, registrants’ “furniture” encompasses applicant’s goods. 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)).
In response, applicant contends the compared goods are dissimilar because the goods are sold or provided through separate trade channels. However, evidence from Lowes, West Elm, Pottery Barn, and Baxton Studio establishes that applicant’s bathroom vanities and kitchen cabinets, as well as registrants’ furniture, are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Specifically, the evidence establishes that bathroom vanities and kitchen cabinets (applicant’s goods) are categorized as “furniture” (registrants’ goods) and are sold as “furniture” goods.
Lastly, applicant asserts confusion is unlikely because purchasers are sophisticated. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Based on the analysis above, applicant’s and registrants’ goods are related.
Because applicant’s and registrants’ marks are similar and the goods are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act. Based on the foregoing, the refusal based on a likelihood of confusion is maintained and now made FINAL.
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).
Anicka Purath
/Anicka S. Purath/
Examining Attorney
Law Office 101
(571) 270-0622
anicka.purath@uspto.gov
RESPONSE GUIDANCE
