To: | Jusuru International Inc. (uspt@polsinelli.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87076959 - TRIA - 083369545563 |
Sent: | 3/31/2017 2:42:10 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87076959
MARK: TRIA
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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: Jusuru International Inc.
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/31/2017
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
INTRODUCTION
This responds to the applicant’s submission of March 27, 2017 in response to an Office action issued September 27, 2017 in which the examining attorney refused registration under 15 U.S.C. Section 1052(d) because of a likelihood of confusion with the mark in U.S. Registration Nos. 3828866 and 3822558; required a drawing and specimen that show the same mark; and required an amended mark description.
The amended drawing and mark description are acceptable. These requirements have been met.
The undersigned has carefully considered the applicant’s arguments against this refusal but has found them to be unpersuasive. Therefore, the Section 2(d) refusal is continued as to both registrations. The applicant voluntarily amended the description of goods. This amendment is unacceptable and raises a new issue. Therefore, none of the refusals/requirements outlined below are made final.
LIKELIHOOD OF CONFUSION
As noted below, the amended identification of goods is unacceptable. Since it is unacceptable, the original identification of goods remains operable. See TMEP section 1402.07(d).
The applicant seeks to register TRIA in stylized form for: dietary supplement, namely, a liquid energy dietary supplement
The registered marks are: TRIA and TRIA BEAUTY (with BEAUTY disclaimed) for: Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated acne treatment preparations.
The applicant’s mark contains stylization. The registered mark are in standard character form. Therefore, the registered marks may be displayed in any stylization, including stylization similar to that of the applicant.
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”).
For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the design element in the applicant’s mark is not enough to overcome this refusal, based on the identification of goods in the record.
As noted earlier, as to the applicant’s mark and the TRIA registration, the word elements of the marks are identical. 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).
As to the applicant’s mark and the TRIA BEAUTY mark, BEAUTY in that registration is highly descriptive, if not generic, for the cosmetic items, and does not lend trademark significance to that mark. 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) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The goods of the parties are very closely related, as shown by the evidence in the earlier Office action. This included evidence that the goods of the parties emanate from the same sources in the marketplace, and that beauty supplements contain similar ingredients as skin care preparations, because they are used for similar purposes.
In response, the applicant maintains that TRIA appears to be weak and diluted because it “appears in 46 LIVE U.S. Patent and Trademark Office records, 38 of which are concurrently registered marks.” Resp. at 5. The applicant then listed several sample registrations to show weakness of TRIA.
The applicant included a list of seventeen sample registrations containing TRIA. The applicant failed to submit copies of the registrations, instead stating that “[t]o the extent the Examiner would find it helpful to see copies of the foregoing referenced marks, Applicant will provide such materials.” Resp. at 4. The mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d, 1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.
Nevertheless, of those seventeen, only five are registered for use with goods that are relevant to this analysis, in the beauty and skin care field. All five are actually owned by the registrant. Therefore, the applicant’s own evidence shows that the registrant’s marks are actually relatively strong in this field, rather than weak. This undercuts the applicant’s position that the field is “crowded” as to the term TRIA.
The applicant also alleges that the “fashion design” marks are “much more strongly associated” with the TRIA marks because “cosmetic beauty products sold in connection with the [cited marks] are very likely to be sold to the same or similar consumers who are utilizing fashion services….” Resp. at 5. The applicant failed to provide any evidence to support this position.
The applicant also that “the TRIAS registration for artificial limbs is highly similar to the TRIA registrations … for orthopedic medical services, yet they are similarly allowed to coexist.” Resp. at 4. The applicant again failed to supply any evidence to support this position. Further, those goods pertain to sophisticated medical services and equipment, while the goods at issue are common cosmetic and supplement products.
Based on the fact that the marks are virtually identical and the goods are closely related as shown by the evidence of record, the Section 2(d) refusal is maintained.
AMENDMENT TO GOODS IS BEYOND SCOPE OF ORIGINAL
In this case, the application originally identified the goods and/or services as follows: “dietary supplement, namely, a liquid energy dietary supplement.”
However, the proposed amendment identifies the following goods and/or services: “liquid energy beverages.”
This proposed amendment is beyond the scope of the original identification because it is broad enough to include energy beverages that are not dietary supplements. The original description contained the limiting wording “dietary supplement, namely,” and “…dietary supplement.”
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110.
Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp. The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@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.