Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  October 14, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  The applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

•           Preliminary amendment.

The applicant’s declaration, filed 4/14/2021 via Voluntary Amendment, is acceptable.

 

1.         Likelihood-of-confusion refusal—

as to “Christmas tree decorations including ornaments and trees” and Class 25.

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5698236.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the referenced registration (in Appendix below).

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

            a.        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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).

In the instant case, the applicant’s mark QUEEN OF CHRISTMAS is a reverse combination of the same elements as the registered mark CHRISTMAS QUEEN—and they convey the same meaning and create substantially similar commercial impressions. Thus the respective parties’ marks are virtually identical.

 

            b.        Comparison of goods/services.

Where the marks of the respective parties are virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)); TMEP §1207.01(a).

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); TMEP §1207.01(a)(i). 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

In the instant case, certain of the applicant’s goods/services…

• Christmas tree decorations including ornaments and trees
• Class 25 (any/all of which items could be Christmas- and/or Santa-themed)

…are sufficiently related to certain of the registrant’s goods/services…

• plastic Christmas ornaments
• Santa hats
• non-lit, decorated artificial Christmas garlands; Christmas stockings; Christmas tree skirts, Christmas tree ornaments

The relatedness of the respective parties’ Christmas decorations/ornaments is self-evident; and

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).

Thus the respective parties’ goods are likely to travel through the same channels of trade to the same classes of purchasers. 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, because confusion as to source is likely in the instant case, registration is refused under Trademark Act §2(d).  Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

•           Advisory.

The stated refusal refers to “Christmas tree decorations including ornaments and trees” and Class 25 and does not bar registration for the other goods and/or services.

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

(1)  Deleting the goods and/or services to which the refusal pertains;

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition/ for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

(3)  Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

If the applicant responds to the above refusal to register, the applicant must also respond to the following.

 

2.         Identification of goods/services.

An application’s identification of goods/services must be specific, definite, clear, accurate and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01. 

In the instant case, the identification of goods/services is unacceptable as containing indefinite and overbroad wording—particularly concerning the illustrative wording “including,” which must be replaced by exhaustive wording such as “namely.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive; open-ended wording is not acceptable because it fails to identify specific goods/services.  See TMEP §1402.03(a).  Accordingly, the applicant must clarify along the lines indicated below.  The applicant may adopt the following identification (to the extent accurate):

Class 3—fragrances for personal use, fragranced products, namely, perfume, eau de parfum; scented products, namely, body lotions; cosmetics; non-medicated skin care preparations; non-medicated skin care preparations, namely, [specify, e.g., creams, lotions, gels, toners, cleaners and peels]; make-up; spa items, namely including massage oils, aromatherapy products in the nature of [specify, e.g., non-medicated skin creams with essential oils for use in aromatherapy], [specify, e.g., facial]lotions, [specify, e.g., facial]creams; hair care preparations; nail polish

Class 5—medicated skin care preparations

Class 9—musical sound recordings; downloadable musical sound recordings; audiovisual recordings featuring musical entertainment; downloadable audiovisual recordings featuring musical entertainment; motion picture films featuring music, family, holiday and variety entertainment; prerecorded phonograph albums featuring singing and music; compact discs, all featuring music; a series of musical sound recordings; a series of musical video recordings; a series of audio visual recordings featuring musical and musical based entertainment, a series of downloadable musical sound recordings, a series of downloadable musical video recordings, a series of downloadable audio visual recordings featuring music and musical based entertainment, and a series of downloadable ring tones for mobile phones; eyewear, sunglasses, cases for eyeglasses and sunglasses; protective industrial [specify face or respiratory]masks; protective face masks for the prevention of accident or injury

Class 10—protective masks, namely sanitary masks for protection against viral infection; protective face masks, namely fashion face masks being sanitary masks for protection against viral infection

Class 14—jewelry, jewelry boxes

Class 16—printed materials, namely including books about [specify, e.g., music]; printed posters

Class 18—carrying cases, namely including backpacks; dog clothing and accessories, namely [specify, e.g., rawhide chews for dogs]; dog collars, dog leashes

Class 1—dog accessories, namely chemical sprays used to aid in housebreaking dogs

Class 21—beverage glassware, cups, mugs, corkscrews, cocktail shakers; beverageware, namely including mugs

Class 25—clothing, namely including shirts, t-shirts, sweatshirts, hooded jackets, headwear, caps, sleepwear, pajamas, one-piece garments for children, lingerie, clothing masks in the nature of face masks and fashion masks,[Class 10] tank tops, hooded shirts and sweatshirts, bandanas; footwear

Class 28—Christmas tree decorations, namely including ornaments and decorations for trees; toys and accessories, namely including dolls

Class 29—food products, namely including milk, chocolate milk and milk based beverages containing [specify, e.g., coffee or fruit juice or high milk content]; oat milk, coconut milk, almond milk, soy milk, nut milk, rice milk, lactose-free milk

Class 30—food products, namely including hot chocolate and frozen hot chocolate; coffees, teas, chocolates and chocolate-based ready to eat candies and snacks

Class 32—beer, ale, lager, stout and porter; non-alcoholic beverages, namely, carbonated beverages and non-carbonated soft drink, fruit juices, [specify, e.g., drinking or mineral or still]water, coconut water

Class 33—alcoholic beverages, except beer; wine; alcoholic coffee-based beverages; alcoholic chocolate-based beverages; alcoholic beverages, except beer, containing milk, chocolate milk, oat milk, coconut milk, almond milk, soy milk, nut milk, rice milk, or lactose-free milk; spirits and liqueurs

Class 35—online retail store services featuring [specify, e.g., jewelry and clothing]; retail store services featuring [specify, e.g., jewelry and clothing]

Class 38—streaming of audio and audio visual informationmaterial on the internet featuring music and musical based entertainment; providing online chatrooms for transmission of messages among computer users concerning a musical artist and such artist's music, sound and video recordings, pictures, news, special projects, personal appearances, and biographyical material

Class 41—entertainment services, namely including live musical-band performances, online non-downloadable ongoing recorded programs and specials featuring musical, family, holiday, and variety entertainment, all accessible by television, the internet and wireless devices; entertainment services and web-based services, namely including online non-downloadable ongoing recorded programs and specials featuring musical, family, holiday, and variety entertainment, all accessible by television, the internet and wireless devices; providing online non-downloadable ongoing prerecorded audio and video contentprograms and specials featuring musical, family, holiday and variety entertainment, all accessible via the internet and wireless devices; providing online non-downloadable ongoing recorded webisodes featuring musical, family, holiday and variety entertainment, all available via a global computer network; providing information on a television program, special entertainment program, and online entertainment program and motion picture featuring music, family, holiday and variety entertainment, and providing a website featuring non-downloadable photographs in the field of such program and motion picture, and other entertainment information via the internet and wireless devices; entertainment services in the nature of live musical performances by an individual; entertainment services in the nature of periodic live musical performances by an individual; entertainment services in the nature of live singing performances by an individual; providing non-downloadable prerecorded music at a website and entertainment information on a musical performer via a website on a global computer network; providing entertainment information on a musical artist and on such artist's music, sound and video recordings, pictures, news, special projects, and personal appearances via a website on a global computer network

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

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 at http://tmidm.uspto.gov.  See TMEP §1402.04.

 

3.         Fee.

The application identifies goods and/or services that are classified in at least 17 classes; however, the applicant’s current fee structure is sufficient for only 16 classes.  In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.  Therefore, the applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for each additional class. 

If the applicant prosecutes this application as a more-than-16–, rather than as a 16-, class application, then the applicant must comply with both of the requirements below for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e) or both:

(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(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

For an overview of the requirements for a multiple-class application based on Section 1(b) or Section 44 or both, and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, the applicant should visit http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

•           Responding to this Office Action.

The applicant may call—or, preferably, email—the assigned trademark examining attorney with questions about this Office Action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office Action.  See TMEP §§705.02, 709.06.  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.    

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

 

 

Mark
        CHRISTMAS QUEEN
Goods and Services
        IC 006. US 002 012 013 014 023 025 050. G & S: Metal Christmas stocking hangers in the nature of hooks; Metal wreath hangers. FIRST USE: 20180800. FIRST USE IN COMMERCE: 20180800

        IC 020. US 002 013 022 025 032 050. G & S: Christmas pillows; plastic Christmas ornaments. FIRST USE: 20180800. FIRST USE IN COMMERCE: 20180800

        IC 025. US 022 039. G & S: Santa hats. FIRST USE: 20180800. FIRST USE IN COMMERCE: 20180800

        IC 026. US 037 039 040 042 050. G & S: Home decorative Christmas ribbon; bows not of paper for gift wrapping. FIRST USE: 20180800. FIRST USE IN COMMERCE: 20180800

        IC 028. US 022 023 038 050. G & S: Non-lit, decorated artificial Christmas garlands; Christmas stockings; Christmas tree skirts, Christmas tree ornaments. FIRST USE: 20180800. FIRST USE IN COMMERCE: 20180800
Standard Characters Claimed
        STANDARD CHARACTERS CLAIMED
Mark Drawing Code
        (4) STANDARD CHARACTER MARK
Serial Number
        87532093
Filing Date
        July 18, 2017
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        May 8, 2018
Registration Number
        5698236
Registration Date
        March 12, 2019
Owner Name and Address
        (REGISTRANT) Ice Design Factory, Inc. CORPORATION ILLINOIS 2023 W. Carroll, Suite 403 Chicago ILLINOIS 60612
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CHRISTMAS" APART FROM THE MARK AS SHOWN
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Richard Gurak

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 14, 2021 for

U.S. Trademark Application Serial No. 90571927

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 14, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”