To: | Grenade Supply Co. (brad@grenadesupply.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86346612 - ENERGY - N/A |
Sent: | 11/12/2014 12:03:11 PM |
Sent As: | ECOM115@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86346612
MARK: ENERGY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Grenade Supply Co.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 11/12/2014
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 that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION: Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1197601, 2607788, and 3156860. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant seeks to register the mark ENERGY for use with "After-shave lotions; Antiperspirants and deodorants for personal use; Bath soaps in liquid, solid or gel form; Body spray used as a personal deodorant and as fragrance; Hair shampoos and conditioners; Shampoos; Shaving cream; Shaving gel; Shaving soap" in International Class 003. The cited registrations are:
· U.S. Registration No. 1197601, N.R.G., registered for use with "Hair Conditioner" in International Class 003.
· U.S. Registration No. 2607788, INERGY, registered for use with "hair care preparations, namely shampoos sold exclusively through professional hair styling salons" in International Class 003.
· U.S. Registration No. 3156860, ENERGY-MASK, registered for use with "skin and facial masks, facial cleansers, astringents for cosmetic purposes, skin cleansing lotions, skin cleansing cream, skin clarifiers, skin lotions" in International Class 003.
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.
Applicant uses the mark ENERGY. Registrants use the mark N.R.G., INERGY, and ENERGY-MASK. Considering the first two marks together, N.R.G. and INERGY, the marks are essentially phonetic equivalents to applicant's mark, and thus, the marks sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv). Accordingly, applicant's mark is considered confusingly similar to N.R.G. and INERGY for purposes of Section 2(d).
Regarding the comparison of applicant's mark and ENERGY-MASK, it appears that applicant's mark is registrant's mark with the hyphenated term "-MASK" removed from the mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark. Consequently, applicant's mark is considered confusingly similar to registrant's mark for purposes of Section 2(d).
Relatedness of the Services: Applicant seeks to use its mark for "After-shave lotions; Antiperspirants and deodorants for personal use; Bath soaps in liquid, solid or gel form; Body spray used as a personal deodorant and as fragrance; Hair shampoos and conditioners; Shampoos; Shaving cream; Shaving gel; Shaving soap" in International Class 003.
Registrant (N.R.G.) uses its mark for "Hair Conditioner" in International Class 003.
Registrant (INERGY) uses its mark for "hair care preparations, namely shampoos sold exclusively through professional hair styling salons" in International Class 003.
Registrant (ENERGY-MASK) uses its mark for "skin and facial masks, facial cleansers, astringents for cosmetic purposes, skin cleansing lotions, skin cleansing cream, skin clarifiers, skin lotions" in International Class 003.
The goods 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 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).
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based 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 and/or services 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 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 this case, the identifications set forth in the application and registrations are identical in part. Specifically, applicant and N.R.G. both feature "hair conditioner" and applicant and INERGY both feature "shampoos." Additionally, applicant and N.R.G. have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services 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). Further, though INERGY is restricted in its trade channels, as its identification of goods indicates that its shampoos are "sold exclusively through professional hair styling salons," the absence of restriction in applicant's identification establishes that its goods may be available in the same channels as registrant's goods. Accordingly, the goods of applicant and these registrants are considered related for purposes of the likelihood of confusion analysis.
Regarding the relatedness of applicant's goods to those of ENERGY-MASK, applicant's mark and registrant's mark are both used for skin care products. Specifically, applicant uses its mark with "After-shave lotions" and "[b]ath soaps in liquid, solid or gel form," while registrant uses its mark for "facial cleansers," "skin cleansing lotions, skin cleansing cream," and "skin lotions." As the attached internet evidence demonstrates, the primary purpose of soap is to clean. Accordingly, registrant's registration of "facial cleansers," and "skin cleansing lotions" is broad enough that it would encompass applicant's "bath soaps in liquid, solid, or gel form." Additionally, applicant's "after-shave lotions" would be encompassed by registrant's "skin lotions." Accordingly, the goods of applicant and this registrant are considered confusingly similar.
Accordingly, when considering the similarity of applicant's mark and registrant's mark in coordination with the relatedness of applicant's and registrant's respective services, a likelihood of confusion exists whereby consumers encountering applicant's services and registrant's services are likely to believe they emanate from a common source. Accordingly, applicant's registration must be refused under §2(d).
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 determines to respond to these registrations, applicant may also respond to the following.
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.
TEAS PLUS APPLICANTS – TO MAINTAIN REDUCED FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus application form must (1) continue to submit certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of these documents); (2) accept correspondence from the USPTO via e-mail throughout the examination process; and (3) maintain a valid e-mail address. See 37 C.F.R. §2.23(a)(1), (a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these three requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. However, in certain situations, authorizing an examiner’s amendment by telephone will not incur this additional fee.
/Lee B. Hunt/
Examining Attorney
Law Office 115
(571) 272-8129
lee.hunt@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 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. 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 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.