Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

 

International Registration No. 1633265

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment).  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

Introduction

 

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.

 

Summary of Issues

 

·       Section 2(d) - Likelihood of Confusion Refusal

·       Advisory regarding Potential Section 2(d) Refusal – Prior-Filed Applications

·       Advisory regarding Existing Consent Agreement

·       Disclaimer of Geographically Descriptive Wording Required

·       Clarification of Legal Entity Required

·       Applicant Email Address Required

·       Representation by U.S.-Licensed Attorney Required

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 6636014.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 “LA PRAIRIE SWITZERLAND” in stylized text for “medicated preparations for skin care, medicinal creams for skin care, pharmaceutical preparations for skin care; all the aforesaid goods of Swiss origin” in International Class 005.

 

Registrant’s mark is “CLINIQUE LA PRAIRIE” in standard characters for “health care clinic services; health center services; hospital services; medical and surgical services; medical assistance; massage therapy services; dentistry services; health massage; physical therapy; nutritional advice provided by a physician; services of a psychologist; psychiatric services; medical services provided by a therapist; nutritional and dietetic consultancy; medical services to help individuals to give up smoking; medical spa services, namely, health spa services for health and wellness of the body and spirit; telemedicine services; advice and information with respect to all the aforesaid services” in International Class 044.

 

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, “LA PRAIRIE SWITZERLAND”, is confusingly similar to the registered mark, “CLINIQUE LA PRAIRIE”.  The compared marks share the same dominant wording, namely, “LA PRAIRIE”. 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) (holding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (holding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Applicant’s and registrant’s marks are identical in part, thus creating the same overall commercial impression to consumers.

 

Further, 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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). Here, registrant disclaimed the wording “CLINIQUE” as merely descriptive for registrant’s services, rendering “LA PRAIRIE” the dominant portion of the mark.

 

Similarly, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence shows that the wording “SWITZERLAND” in the applied-for mark is merely geographically descriptive of applicant’s goods and/or services. See attached evidence from The Columbia Gazetteer and Merriam-Webster showing the geographic significance of the wording “SWITZERLAND”. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “LA PRAIRIE” the more dominant element of the mark.

 

In addition, 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 the present case, registrant’s mark is in standard characters and, thus, could be presented in the same manner of display as the applied-for mark.

 

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 and Services

 

The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi).

 

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They 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).

 

Here, applicant’s goods, “medicated preparations for skin care, medicinal creams for skin care, pharmaceutical preparations for skin care,” are closely related to registrant’s services, “massage therapy services; health massage medical spa services, namely, health spa services for health and wellness of the body and spirit.”

 

The attached Internet evidence, consisting of website excerpts from Clarins, Cold Spring Apothecary, and Flawless Future Medical Spa, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark. See attached evidence from Clarins, Cold Spring Apothecary, and Flawless Future Medical Spa. 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).

 

Accordingly, the goods and services are considered related for purposes of the likelihood of confusion analysis.

 

Conclusion

 

Because the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services, and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Advisory regarding Potential Section 2(d) Refusal - Prior Filed-Applications

 

The filing dates of pending U.S. Application Serial Nos. 88719148, 88719149, and 88724242 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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.

 

While applicant is not required to respond to the issue of the pending applications, applicant must respond to the Section 2(d) Refusal above and requirement(s) below within the six-month deadline mentioned above to avoid abandonment.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Advisory regarding Existing Consent Agreement

 

The trademark examining attorney notes that the applicant and the registrant identified in the Section 2(d) likelihood of confusion refusal above have a consent agreement, made of record in U.S. Registration No. 6636014, submitted as part of registrant’s October 4, 2021 response to Office action. However, the consent agreement covers registrant’s mark in Reg. No. 6636014 and applicant’s registered marks listed in the consent agreement only, namely, U.S. Registration Nos. 1150741, 1257311, 1334997, 1665540, 2089187, 3643174, 3643181, and 3697981. See U.S. Reg. No. 6636014 for consent agreement submitted on October 4, 2021 as part of registrant’s response to Office action.

 

The consent agreement states, in pertinent part:

 

1. “[CLINIQUE LA PRAIRIE] hereby consents to “[LABORATOIRES LA PRAIRIE]’s use and registration of [LABORATOIRES LA PRAIRIE]’s Marks for the goods and services covered by [LABORATOIRES LA PRAIRIE]’s registrations as identified above;

 

2. “[LABORATOIRES LA PRAIRIE] hereby consents to [CLINIQUE LA PRAIRIE]’s use and registration of [CLINIQUE LA PRAIRIE]’s Mark for the services covered by [CLINIQUE LA PRAIRIE]’s application as identified above[.]”

 

Therefore, applicant is advised that the consent agreement above does not apply to this application and registrant’s pending U.S. Application Serial Nos. 88719148, 88719149, and 88724242 because these applications are outside the scope of the consent agreement according to the above referenced language.

 

Disclaimer of Geographically Descriptive Wording Required

 

Applicant must disclaim the wording “SWITZERLAND” because it is primarily geographically descriptive of the origin of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from The Columbia Gazetteer and Merriam-Webster shows that “SWITZERLAND” is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address.  See TMEP §1210.03.  Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “SWITZERLAND” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

Clarification of Legal Entity Required

 

Applicant must specify its legal entity type and national citizenship or foreign country of organization or incorporation, as applicant did not include this information in the application.  See 37 C.F.R. §§2.32(a)(3)(i)-(v), 2.61(b); TMEP §§803.03, 803.04.  This information is required for all U.S. trademark applications, including those filed under Trademark Act Section 66(a).  See 37 C.F.R. §7.25(a)-(b); TMEP §1904.02(a). 

 

Acceptable legal entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent.  See TMEP §§803.03 et seq.  If applicant’s legal entity type is an individual, applicant must so specify and provide his or her national citizenship.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(a).  If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(b)-(c).  For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP).  TMEP §803.03(c).  If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located.  See TMEP §803.04. 

 

Applicant Email Address Required

 

Email address required.  Applicant must provide applicant’s email address, which is a requirement for a complete application.  See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b).  This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application.  See TMEP §803.05(b). 

 

Representation by U.S.-Licensed Attorney Required

 

Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney.  37 C.F.R. §2.11(a); TMEP §601.01(a).  An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §2.11(a); TMEP §§601, 601.01(a).  In this case, applicant’s domicile is identified in the application as outside of the United States or its territories.  For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.  

 

To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/ccr/car.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.

 

Response Guidelines

 

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.

 

Assistance.  Please call or 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.    

 

 

/Brandon T. Lozeau/

Brandon T. Lozeau

Examining Attorney, Law Office 303

U.S. Patent and Trademark Office

brandon.lozeau@uspto.gov

(571) 270-7862

 

 

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.