To: | Nest Care, Inc. (leonard@grayverlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90576814 - NEST - N/A |
Sent: | October 19, 2021 02:40:28 PM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90576814
Mark: NEST
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Correspondence Address:
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Applicant: Nest Care, Inc.
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Reference/Docket No. N/A
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: October 19, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. 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.
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 marks in the referenced applications. 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.
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 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 applicant has applied to register “NEST” (in stylized characters) for “Toothbrush cases; toothbrush holders; toothbrushes that can be refilled with toothpaste” in International Class 21. The cited mark is “NESTORIGIN” (in standard characters) for “Combs; Dishware; Ramekins; Bottle openers, electric and non-electric; Cloths for cleaning; Combs for animals; Containers for household use; Cooling racks for baked goods; Drinking vessels; Feeding vessels for pets; Flower and plant cultivation trays; Gloves for household purposes; Holiday ornaments of ceramic; Household utensils, namely, turners; Make-up removing appliances; Mouse traps; Plant syringes; Tea sets; Toothbrushes, electric; Utensils for barbecues, namely, forks, tongs, turners” in International Class 21.
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).
Here, applicant’s mark is “NEST” (in stylized characters) and registrant’s mark is “NESTORIGIN” (in standard characters).
Additionally, the wording in applicant’s mark appears first in the registered mark, making the shared matter the dominant element in the registered mark. Generally, consumers are more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. 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”).
Finally, the stylization in the applied-for mark does not distinguish it from the registered mark, as the registered mark appears in standard characters. 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 view of the above, the marks are confusingly similar.
COMPARISON OF THE GOODS
Here, applicant’s goods are “Toothbrush cases; toothbrush holders; toothbrushes that can be refilled with toothpaste” in International Class 21.
Registrant’s goods are “Combs; Dishware; Ramekins; Bottle openers, electric and non-electric; Cloths for cleaning; Combs for animals; Containers for household use; Cooling racks for baked goods; Drinking vessels; Feeding vessels for pets; Flower and plant cultivation trays; Gloves for household purposes; Holiday ornaments of ceramic; Household utensils, namely, turners; Make-up removing appliances; Mouse traps; Plant syringes; Tea sets; Toothbrushes, electric; Utensils for barbecues, namely, forks, tongs, turners” in International Class 21.
In this case, the “toothbrushes that can be refilled with toothpaste” in the application are essentially identical in nature and purpose to the “Toothbrushes, electric” in the registration. In addition the presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii). Therefore, it is presumed that applicant’s and registrant’s goods travel in the same trade channels and are directed at the same consumers.
In this case, the toothbrush cases and holders in the application are designed specifically for use with the goods in the registration, namely, electric toothbrushes. Accordingly, these goods are related for likelihood of confusion purposes.
For these reasons, there is a likelihood of confusion and the applied-for mark is refused.
COMMUNICATION
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Matthew Ruskin/
Matthew Ruskin
Examining Attorney, Law Office 106
571-272-3466
matthew.ruskin@uspto.gov
RESPONSE GUIDANCE