To: | SUPREME BRAND MANAGEMENT GROUP INC (soprano.ip@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90670339 - SUPREME - N/A |
Sent: | January 26, 2022 09:18:35 AM |
Sent As: | ecom108@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 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90670339
Mark: SUPREME
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Correspondence Address:
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Applicant: SUPREME BRAND MANAGEMENT GROUP 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: January 26, 2022
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
TRADEMARK ACT 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.
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).
Registrants’ marks are:
Registration No. 1824319 - CONAIR SUPREME in standard characters for “electric hair brushes and curling irons”
Registration No. 3132214 - SUPREME in standard character for “Lavatories, namely, hand-wash bowls”
Registration No. 4335468 - SOUSVIDE SUPREME in a stylized font for “ovens for sous vide cooking”
Registration No. 5653892 - CHEF'S SUPREME in standard characters for “Electric food and beverage warmers; electric coffee brewers; electric food dehydrator; Cabinets used to control temperature and humidity for heating and proofing food goods; Chafing dishes; hot plates; overhead lamps; Electric apparatuses for cooking, namely, ovens, waffle makers, toasters, fryers, grills, tortilla presses, rice cooker”
Registration No. 5856058 - SUPREME in standard characters for “Plumbing fixtures, namely, lavatories, sinks, toilets and toilet bowls”
Registration No. 6147203 - HYDRA-SUPREME in standard characters for “Water and industrial fluid filtration and purification units and replacement cartridges and filters thereof” and
Registration No. 6249830 - GOLDEN SUPREME in standard characters for “Electric heaters and holders for hair irons; Portable electric heaters and holders for hair irons”.
Applicant’s applied-for mark is “SUPREME” stylized for “air conditioners; apparatus for disinfecting water; cooking ovens; electric fans for personal use; electric radiators; electric stoves; hair dryers; lighting apparatus, namely, lighting installations; pipes being parts of sanitary facilities; water purification machines; water purifying apparatus for household purposes”.
Overall “‘commercial impression’ is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (holding the marks VEUVE ROYALE and VEUVE CLICQUOT PONSARDIN confusingly similar); see also Money Station Inc. v. Cash Station Inc., 70 F.3d 1290, 38 U.S.P.Q.2d 1150, 1154 (Fed. Cir. 1995) (holding that MONEY STATION and CASH STATION are confusingly similar as applied to the services specified in its application).
As a primary matter, the marks are confusingly similar because they share a nearly identical dominant element. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the applicant’s mark and each of the registered marks share the term “SUPREME”. This supports the determination that the marks are confusingly similar.
Lastly, where the goods and/or services of an applicant and registrant are identical or virtually identical, 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).
Therefore, as the marks share nearly identical dominant elements and because overall, the marks have a highly similar commercial impression, the marks are highly similar in the context of the likelihood of confusion analysis.
Comparison of the Goods
which presumably encompasses all goods of the type described, including registrants’ more narrow electric hair brushes in Registration No. 1824319, ovens for sous vide cooking in Registration No. 4335468, electric apparatuses for cooking, namely, ovens in Registration No. 5653892, Water and industrial fluid filtration and purification units and replacement cartridges and filters thereof in Registration No. 6147203. 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 registrant’s 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)).
The application also includes several goods, namely, “hair dryers”, which are related to the electric hair brushes in Registration No. 1824319 and related to the “electric heaters and holders for hair irons; portable electric heaters and holders for hair irons” in Registration No. 6249830, as well as “pipes being parts of sanitary facilities” which are related to the “lavatories, namely, hand-wash bowls” in Registration No. 3132214 and the “plumbing fixtures, namely, lavatories, sinks, toilets and toilet bowls” in Registration No. 5856058 because they are used by the same classes of consumers in the same fields of use and are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and/or services 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).
To the extent evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for every good or service. It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.
Trademark Act Section 2(d) Refusal – Conclusion
The applied-for mark is similar in sound and appearance to each of the registered marks, and the parties’ respective goods are highly related. It is likely that a consumer could mistakenly believe applicant’s goods are offered by one of the registrants or vice versa. For these reasons, as detailed supra, registration is refused pursuant to Section 2(d) of the Trademark Act.
Trademark Act Section 2(d) Refusal – Response Options
PRIOR PENDING APPLICATION ADVISORY
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.
ASSISTANCE
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.
/Laura Fionda/
Laura E. Fionda
Trademark Examining Attorney
Law Office 108
Phone: 571-272-7897
Email: laura.fionda@uspto.gov
RESPONSE GUIDANCE