To: | Troika International, Inc. (pfischer@enensteinlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86880126 - BLISS - 04188.003 |
Sent: | 12/7/2016 3:26:29 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86880126
MARK: BLISS
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CORRESPONDENT ADDRESS: Enenstein, Ribakoff, LaVina & Pham, APC |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Troika International, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 12/7/2016
This letter of suspension follows Applicant’s response, filed November 11, 2016. In the initial office action, the examining attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act for a likelihood of confusion with the mark in U.S. Registration Nos. No. 3324627, 2913434 3337598 & 3011661. The examining attorney also issued an advisory that three marks with filing dates that preceded Applicant’s were also pending. One mark, Serial No. 86841648, has since been abandoned. However, the remaining two marks remain pending. Thus, the trademark examining attorney is suspending action on the application for the reason stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending applications identified below precedes the filing date of applicant’s application. If the marks in the referenced applications register, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced applications is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 86829487 & 86512978
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained: Refusal under Section 2(d) of the Trademark Act.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION: CONTINUED AND MAINTAINED
Applicant’s mark is “BLISS” for false eyelashes.
Registrant’s marks are:
BLISS (Design Mark) (3324627) For “Cosmetics”
BLISS (2913434) for : “SKIN MOISTURIZER, BODY SCRUBS, SKIN SOAP, SHOWER GEL, BODY FIRMING GELS AND LOTIONS, SKIN MASKS, [ MAKEUP,] HAND CREAM, FACIAL CLEANSERS, SKIN TONERS, EXFOLIATING BODY SCRUBS”
BLISS (3337598) For “body crème”
BLISS (3011661) for : [ EYE MAKEUP, ] HAIR CARE [ AND NON-MEDICATED SCALP CARE ] PREPARATIONS, HAIR SHAMPOO, FOOT CREAM, [ PERFUME, COLOGNE, (( EAU DE TOILETTE )) SCENTED BODY SPRAY, SUN BLOCK, BODY OIL ].
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, 177 USPQ 563 (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 White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
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). Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
In the present case, applicant’s mark is “BLISS” and Registrant’s marks “BLISS”. Thus the word portion of the marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, Llc, 116 USPQ2d 1406, 1411 (TTAB 2015). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. In re i.am.symbolic, Llc, 116 USPQ2d at 1411.
When marks are similar in sound, appearance, and commercial impression, there is a strong likelihood of confusion.
Comparison of the Goods/Services
There is a high likelihood of confusion when the marks are for similar goods.
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).
Applicant’s arguments and the examining attorney’s rebuttal
The literal portions of the marks are identical
Applicant concedes that the wording of its mark is identical to that of the marks held by Registrant. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)); TMEP §1207.01(a). The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. As such, a consumer encountering “BLISS” in connection with different goods may still be confused as to the source from which they emanate, due to the fact that the marks are virtually identical.
The identification of the goods is controlling
The examining attorney is similarly unpersuaded by Applicant’s argument that its goods are unrelated to those of Registrant. Applicant’s argument has two main points: Firstly, the end consumers of the goods are different, and secondly, Applicant’s goods are sold mainly to specialized retailers. Both of these arguments are unpersuasive for the same reason: the identification in Applicant’s mark contains no such limitations as to the channels of trade or type of consumer. When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods 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 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. As neither the application nor the registered marks contain any restrictions as to the channels of trade in which they travel, it is presumed that they are available wherever cosmetics are sold.
Applicant’s Prior Use of “BLISS” for false eyelashes is not relevant to this proceeding
Applicant’s mark is in standard character form
Applicant’s argument that the registered marks are displayed in a different manner from Applicant’s mark is unpersuasive because Applicant’s mark is in standard character form. 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 marks 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”). As such, Applicant’s mark could still be displayed in a manner identical to that of Registrant’s goods.
The sophistication of a consumer of cosmetics does not result in a familiarity with trademark law
Finally, Applicant’s arguments that the price of Registrant’s goods results in a more sophisticated or knowledgeable consumer is unpersuasive here. Even if there were some specialized education or knowledge required for a consumer to make a decision as to which type of cosmetics to purchase, this does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). A consumer, when encountering the word “BLISS” used in connection with cosmetics, makeup, or false eyelashes, would not necessarily know to distinguish the different sources from which they originate.
Refusal
When confronted with highly similar marks for goods that travel in the same commercial channels, a consumer is likely to arrive at the mistaken conclusion that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Aaron Rosenthal/
Examining Attorney
Law Office 120
Telephone: 571-272-4625
Email: Aaron.Rosenthal@USPTO.gov
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.