To: | Owen Mumford Limited (trademark@carneylaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86102398 - AMIELLE - N/A |
Sent: | 7/26/2015 2:50:20 PM |
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 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86102398
MARK: AMIELLE
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CORRESPONDENT ADDRESS: Carney Badley Spellman, P.S. 701 5th Ave Ste 3600 |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Owen Mumford Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL OFFICE ACTION
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: 7/26/2015
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on June 4, 2015.
The foreign registration has been accepted and the Section 44(e) claim has been perfected.
Registration Refused – Likelihood of Confusion – Maintained and Made FINAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4356056. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration enclosed with the first Office Action.
The applicant submitted a response to the likelihood of confusion refusal with its communication of April 29, 2014. The examining attorney reviewed the applicant’s arguments at that time, and has reviewed them again. Applicant’s arguments have been found unpersuasive for the reason(s) set forth below. Therefore, the likelihood of confusion refusal is maintained and made Final.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Applicant’s mark is “AMIELLE”. Likewise, registrant’s mark is “AMELE”.
The parties’ marks are identical in sound, connotation, and commercial impression, and extremely similar in appearance.
The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. See RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); TMEP §1207.01(b)(iv).
There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See In re Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985); TMEP §1207.01(b)(iv); In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983). The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding of likelihood of confusion. See RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); TMEP §1207.01(b)(iv).
The fact that the applicant’s and registrant’s marks are identical in sound, connotation, and commercial impression, and extremely similar in appearance also is an important factor in the likelihood of confusion analysis. The more similar the parties’ marks, the less related the parties’ good/services are required to be for a likelihood of confusion to be found. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). In the instant case, the applicant’s and the registrant’s marks are not merely similar, but in fact identical in sound, connotation, and commercial impression, and extremely similar in appearance.
It is well-settled that “even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source.” See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 U.S.P.Q.2d 1687, 1690 (Fed. Cir. 1993); see also,In re Opus One, Inc., 60 U.S.P.Q.2d 1812, 1815 (T.T.A.B. 2001) (“Where the applicant’s mark is identical to the registrant’s mark, as it is in this case, there need be only a viable relationship between the respective goods or services in order to find that a likelihood of confusion exists”); In re Concordia Int’l Forwarding Corp., 222 U.S.P.Q. 355, 356 (T.T.A.B. 1983) (“if the marks are the same or almost so, it is only necessary that there be a viable relationship between the goods or services in order to support a holding of likelihood of confusion”).
In the instant case, applicant’s and registrant’s marks are identical in sound, connotation, and commercial impression, and extremely similar in appearance. Therefore, in the instant case the relatedness between the applicant’s and registrant’s goods can be minimal and still a likelihood of confusion will be found.
The fact that applicant’s and registrant’s marks are identical weighs very heavily in favor of a finding of a likelihood of confusion and against registration of applicant’s mark, not only for this du Pont factor, but for the du Pont factor of the relatedness of the parties’ goods/services as well.
Comparison of the Goods
The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
The applicant’s goods are “Dilators, namely, vaginal dilators; vaginal dilators for medical purposes.”
Likewise, the registrant’s goods include “Vaginal lubricants.”
Applicant's and registrant's goods are made by the same manufacturers, and travel through the same trade channels to the same end consumers. The examining attorney herewith submits printouts of several web sites of competitors of applicant. On these web sites applicant's competitors sell both the applicant’s and the cited registrant’s goods. Furthermore, the examining attorney submitted such evidence with the first Office Action. All of this evidence demonstrates that applicant's and registrant's goods are substantially related and are of a kind that do emanate from a single source.
Moreover, the applicant’s and registrant’s goods are complementary, making confusion between the marks even more likely. The examining attorney encloses herewith several printouts of third-parties demonstrating how to use vaginal dilators. These third-party printouts instruct the prospective consumer to use a vaginal lubricant when using a vaginal dilator.
Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
This evidence of the complementary nature of the goods also demonstrates that applicant's and registrant's goods are substantially related and are of a kind that do emanate from a single source.
The applicant claims that the applicant’s and registrant’s goods are intended for different uses by different prospective consumers, and therefore, a likelihood of confusion does not exist in this case. However, when analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based SOLELY on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Absent restrictions in an application and/or registration, the identified goods are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005.
Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). In the instant case, the registrant’s goods include “vaginal lubricants,” WITHOUT limitation as to their intended consumer or use. Therefore, the registrant’s goods include vaginal lubricants both for general use and for use for medical purposes.
In this case, it is presumed that the parties’ goods travel in all normal channels of trade, and are available to the same class of purchasers. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Accordingly, the goods and/or services of applicant and the registrant(s) are considered related for purposes of the likelihood of confusion analysis.
Conclusion
For all of the reasons listed above, applicant’s arguments are insufficient to rebut the examining attorney’s prima facie case of a likelihood of confusion. The examining attorney includes even more evidence and arguments in this final Office Action to corroborate the finding of a likelihood of confusion. In contrast, the applicant has not proffered any evidence. Consequently, all of the evidence and arguments of record weighs very heavily in favor of a finding of likelihood of confusion and against registration of applicant’s mark.
Only If Applicable - Examiner’s Amendment Recommended
Examiner’s Amendments cannot be issued for partial amendments. However, if all of the outstanding issues can be resolved through an Examiner’s Amendment, the applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application. Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of specimens, a particular document or declaration, or the payment of a fee cannot be handled over the telephone.
Questions Regarding This Office Action
Responding to Final Office Action
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen. The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen. Trademark Trial and Appeal Board decisions and the TBMP can be found at the website at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.
Please note that applicant must explicitly address all issues raised in this Office Action. If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal. To respond to requirements/informalities the applicant must specifically request that changes to the record be made.
There is no required format or form for responding to an Office Action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office Actions online at http://www.gov.uspto.report/teas/index.html. TO RESPOND TO THIS LETTER VIA TEAS: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
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.
If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.
/Michael A. Wiener/
Trademark Attorney
Law Office 108
(T): (571) 272-8836
E-Mail (unofficial correspondence only):
michael.wiener@uspto.gov