UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 9/17/2012

 

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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION: THIS REFUSAL APPLIES TO CLASS(ES) 3 AND 25 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0557190 and 3517557.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or 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).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  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).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

The applicant applied to register the mark 'GOOP' for "perfume, cologne, eau de toilette; essential oils for personal use; fragranced body creams, gels and lotions; bath powders; body cleansers and body washes; makeup, including lipstick, lip liner, lip gloss, eyeliner, eyeshadow, foundation, bronzer, powder; haircare products, namely, hair care creams; hair care lotions; hair care preparations; hair colorants; hair coloring preparations; hair creams; hair gel; hair gels; hair lotions; hair mousse; hair mousses; hair pomades; hair relaxers; hair relaxing preparations; hair spray; hair styling gel; hair styling preparations; hair styling spray; styling gels; incense; room sprays  in class 3; dresses; skirts; blouses; shirts; t-shirts; pants; trousers; denim jeans; shorts; jackets; coats; shoes; boots; slippers; scarves; hats and other headwear; knitwear; sweaters; gloves; belts; hosiery; socks; lingerie; waistcoats; pullovers; sweatshirts; loungewear; fitnesswear; bathing suits; bath robes; pajamas in class 25." (See below for a suggestion regarding clarification of this identification). The registered marks are 'GOOP' for "hand cleaner" and ‘GOOP’ for “T-shirts; shirts; sweat pants; sweat shirts; jerseys; tank-tops; shorts; jackets; coats; belts; hats; fleece pullovers; sweaters; jeans; pants; overalls; swimsuits; trunks; bandanas; shoes; sandals; socks; pajamas; underwear; briefs; thermal underwear; belts made of leather.”    Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  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). 

 

In the present case, applicant’s mark is ‘GOOP’ and registrants’ mark is ‘GOOP’.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.

 

Therefore, the marks are confusingly similar. 

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

 

However, in this instance, the applicant's goods are highly similar to the registrants' goods.  Applicant's cosmetic and personal care items are highly related to the registrant’s hand cleaner (U.S. Reg. No. 0557190) and applicant’s clothing items are highly similar to the registrant’s clothing  items  (U.S. Reg. no. 3517557).  The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely hand cleaners and cosmetic and personal care products, are of a kind that may emanate from a single source under a single mark.  See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

 

Therefore the examining attorney refuses registration of the applicant's mark under Section 2(d), 15 U.S.C. 1052 (d), because the mark is highly similar to a registered mark and the goods are also either highly related or highly similar.

 

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.

 

INFORMALITIES :

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

 

IDENTIFICATION OF GOODS AND SERVICES:

 

The identification of goods and services is indefinite and must be clarified because it certain items need further specification and some items are also improperly classified.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

International Class 3: Perfume, cologne, eau de toilette; Essential oils for personal use; Fragranced body creams, bath gels and body lotions; Bath powders; Body cleansers and body washes; Makeup, namely lipstick, lip liner, lip gloss, eyeliner, eyeshadow, foundation, skin bronzer, body powder; Haircare products, namely, hair care creams; hair care lotions; hair care preparations; hair colorants; hair coloring preparations; hair creams; hair gel; hair gels; hair lotions; hair mousse; hair mousses; hair pomades; hair relaxers; hair relaxing preparations; hair spray; hair styling gel; hair styling preparations; hair styling spray; styling gels; Incense; scented room sprays

 

International Class 4: Candles; Perfumed candles; Scented candles; Tea light candles [acceptable as is]

 

International Class 5: Vitamins; Dietary supplements [acceptable as is]

 

International Class 7: Electric food blenders

 

International Class 8: Cutlery, namely, knives, forks and spoons [acceptable as is]

 

International Class 9: Sunglasses [acceptable as is]

 

International Class 11: wine coolers, namely refrigerated cabinets containing racks for wine bottles and storage shelves

 

International Class 14: jewelry [acceptable as is]

 

International Class 16: Journals in the field of [applicant must specify the subject matter]; Newsletters in the field of [applicant must specify the subject matter] and newspapers; Magazines in the field of [applicant must specify the subject matter]; Books in the field of [applicant must specify the subject matter]; Holiday and greeting cards; Stationery

 

International Class 18: Handbags; Luggage [acceptable as is]

 

International Class 20: Picture frames; Mirrors; pillows; wine racks

 

International Class 21: Pillows [this item is properly classified in class 20]; Cups and Mugs; Beverage glassware; Bowls; Plates; Dinner Sets comprised of [applicant must specify the primary components of the set]; Candle holders; Vases; Non-electric food blenders; Pots; Pans; Cutting boards; Wine racks [this item is properly classified in class 20]; coolers for wine; Wine buckets; Coasters not of paper and not being table linen; Serving trays

 

International Class 24: Bedding, namely, bed spreads, bed sheets, duvets, pillow cases; Blanket throws; Towels; Dish cloths; Linens

 

International Class 25: Dresses; Skirts; Blouses; Shirts; T-Shirts; Pants; Trousers; Denim jeans; Shorts; Jackets; Coats; Shoes; Boots; Slippers; Scarves; Hats and other headwear; Knitwear , namely sweaters; Gloves; Belts; Hosiery; Socks; Lingerie; Waistcoats; Pullovers; Sweatshirts; Loungewear; Fitnesswear, namely [applicant must specify common commercial name of the clothing items, i.e. sweat pants, etc.]; Bathing suits; Bath robes; Pajamas

 

International Class 32: Juice, namely [applicant must specify type of juice, i.e. fruit juice, vegetable juice, etc.]; Mineral and carbonated water

 

International Class 33: wine [acceptable as is]

 

International Class 41: Online journals, namely, a group of blogs featuring information, advice, comments and tips about fashion and style, cooking and recipes, travel, entertainment, relationships and conscious living, and interior decoration [acceptable as is]

 

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or 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.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information 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. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

 

/Won T. Oh/

Law Office 114

(571)272-9204

won.oh@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/17/2012 FOR

SERIAL NO. 85646719

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/17/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.