To: | Delta Enterprise Corp. (goldbergpat@earthlink.net) |
Subject: | U.S. Trademark Application Serial No. 90695815 - GEMINI - 501/3/086 |
Sent: | January 18, 2022 03:43:01 PM |
Sent As: | ecom304@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90695815
Mark: GEMINI
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Correspondence Address: |
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Applicant: Delta Enterprise Corp.
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Reference/Docket No. 501/3/086
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 18, 2022
Introduction
Summary of Issues
· Section 2(d) - Likelihood of Confusion Refusal
Section 2(d) - Likelihood of Confusion Refusal
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.
Applicant has applied to register the mark GEMINI in standard characters for “Strollers” in International Class 12.
Registrant’s mark is GEMINI&GENIUS in standard characters for “Amusement park rides; Balls for games; Building games; Chess games; Gyroscopes and flight stabilizers for model aircraft; Jigsaw puzzles; Parlour games; Plush toys; Remote-controlled toy vehicles; Scale model kits; Scale model vehicles; Teddy bears; Toy building blocks; Toy cameras; Toy figures; Toy models; Toy putty; Toy robots; Toy scooters; Toy telescopes; Toy vehicles; Toy watches; Toy drones; Toy for pets; Play swimming pools; Toy tricycles for children” in International Class 28.
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).
Here, applicant’s mark, GEMINI, is confusingly similar to the registered mark, GEMINI&GENIUS.
Furthermore, incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. Furthermore, the additional term in registrant’s mark, GENIUS, alludes to an attribute of many of the goods, that they are used or intended to help children learn. Therefore the term is suggestive of the types of goods they provide, and less likely to be memorable to consumers. Accordingly, the two marks have a very similar overall commercial impression.
Because the marks look and sound similar and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods
Here, applicant’s goods, “strollers” are closely related to registrant’s goods, “toy tricycles for children.”
Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.
Conclusion
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods, and registration is refused pursuant to Section 2(d) of the Trademark Act.
Response Options to Refusals
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.
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.
/Hope M. Bonen-Clark/
Hope M. Bonen-Clark
Trademark Examining Attorney, Law Office 304
U.S. Patent and Trademark Office
hope.bonenclark@uspto.go
RESPONSE GUIDANCE