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.  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: 5/20/2019

 

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.  

 

This application was suspended pending the disposition of a prior filed application and the refusal to register based on a likelihood of confusion with U.S. Registration No. 1908058 was maintained and continued. The prior filed application has matured to U.S. Registration No. 5699743.  Accordingly, the examining attorney issues the following:

 

Refusal Section 2(d) – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5699743.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant has applied to register the mark GALAXY (standard characters) for “Bar soap; Cakes of soap; Non-medicated skin care preparations, namely, solid soaps.”

 

The mark in U.S. Registration No. 5699743 is GROOMING GALAXY (standard characters) for, inter alia, “Toiletries, namely, body deodorant, antiperspirants, shower gel, body wash, facial cleanser, facial scrub, facial wash, non-medicated hand wash, non-medicated hand soaps, moisturizing body lotions, body lotion, body moisturizers, facial moisturizers, hand moisturizers, after-shave liquid, aftershave cream, after-shave lotions, after-shave emulsions, after-shave cologne, after-shave moisturising cream, after-sun gels, namely, cosmetics, after-sun lotions, after-sun oils, namely, cosmetics, after-sun milks, namely, cosmetics, after sun creams, after sun moisturisers, bath cream, bath foam, bath crystals, bath gels, bath lotion, bath oils and bath salts, bath powder, namely, cosmetics, antiperspirant soap, Almond soaps, antibacterial soap, depilatory wax, baby shampoo, baby wipes, conditioner, hair gel, hair wax, hair spritz, hairspray, dentifrices, anti-cavity mouthwashes, alum stones, namely, astringents for cosmetic purposes, astringents for cosmetic purposes, baby bubble bath, baby hair conditioner, baby hand soap, baby lotion, baby oil, baby oils, baby powder, baby wipes, baby wipes cases, aromatic body care products, namely, body lotion, shower gel, cuticle cream, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream, aromatic oils for the bath, aromatic preparations, namely, cream, lotion and body spray, aromatic essential oils, aromatic potpourris, bath and shower gels and salts not for medical purposes, bath beads, bath bombs, bath cream, bath crystals, bath fizzies, bath flakes, bath foam, bath foams, bath gel, bath gels, bath herbs, bath melts, bath milks, bath oils and bath salts, bath oils for cosmetic purposes, bath pearls, bath powder, namely, cosmetics, non-medicated bath salts, beauty creams, beauty creams for body care, beauty gels, beauty lotions, beauty masks, beauty milks, beauty serums, beauty soap, bar soap, bath soaps, bathing lotions, bay rums, body butter, body crayons, body cream, body cream soap, body creams, body deodorant in pill form, body deodorant, namely, perfumery, body emulsions, body mask cream, body mask lotion, body mask powder, body masks, body milks, body oils, body powder, body splash, breath fresheners, breath freshening confectionary, namely, dissolvable breath strips, breath mints, candy and gum, breath freshening sprays, breath freshening strips, Cedarwood perfumery, cleansing creams, namely, cosmetics, cleansing milk, cold creams, cologne, cologne water, Colognes, hair colorants, hair dyes, hair bleach, color-removing preparations for hair, cosmetic body scrubs for the face, feet, hands and body, cosmetic cotton wool, cosmetic creams, cosmetic creams for skincare, cosmetic facial blotting papers, cosmetic hair dressing preparations, cosmetic hair filling powders for covering bald and thinning spots on the scalp, cosmetic hair regrowth inhibiting preparations, cosmetic massage creams, cosmetic nourishing creams, cosmetic masks, cosmetic hand creams, cosmetic milks, cosmetic oils, cosmetic olive oil for the face and body, cotton balls for cosmetic purposes, dental bleaching gels, dental rinses for non-medical purposes, denture cleaners, denture polishes, depilatory wax, Eau de parfum, eye gels, eye cream, eye lotions, face and body lotions, face oils, facial moisturizer with SPF, foot deodorant spray; hair care preparations; shampoo, hair conditioner, hair gel, hair wax, hair spritz, hairspray, hair colorants, hair dyes, hair bleach, hair creams, hair decolorants and dry shampoos; body moist spray; spot sticks; moisturisers; body moisturiser, facial moisturiser; shaving preparations; shaving gel, shaving oil, shaving cream, shaving foam, shaving spritz, shaving soap, shaving stones; after-shave preparations; after-shave; after-shave gel, after-shave balm; hair removal preparations and creams; depilatory preparations; perfumery; eau de toilette; essential oils; cosmetics; dentifrices; lip balm; moustache wax; Skincare preparations, namely, anti-ageing creams, anti-ageing cream containing a retinoic ingredient not for medical purposes, anti-ageing cleanser, anti-ageing moisturizer, anti-ageing toner, anti-ageing moisturizer used as cosmetics, age-spot reducing creams, age-retardant gel, age-retardant lotion, anti-ageing cleanser, antibacterial skin soaps, aromatic essential oils, anti-wrinkle creams, baby oil, anti-freckle creams, Argan oil for cosmetic purposes, Amla oil for cosmetic purposes, Almond oil for the treatment of skin and hair, Almond milk for cosmetic purposes, Aloe vera gel for cosmetic purposes, Bergamot oil, antibacterial skin soaps, cosmetic preparations for skin renewal, cosmetic preparations against sunburn; Make-up kits comprised of blush, blush pencil, blusher, Acrylic nail powder and liquid preparations for shaping or sculpting nails, namely, cosmetics, adhesives for affixing false eyelashes, adhesives for affixing false hair, adhesives for affixing false eyebrows, adhesives for artificial nails, adhesives for cosmetic use, artificial eyelashes, artificial fingernails, cleaner for cosmetic brushes, compacts containing make-up, concealers for skin, face and body, cosmetic pads, cosmetic pencils, cosmetic white face powder, cuticle cream, cuticle conditioners, lip primer, lip repairer, foundation make-up, foundation, eye make-up, eye make-up remover, eye pencils, eye shadows, eyebrow colors, eyeliners, face and body glitter, face paint, fingernail jewelry, fingernail tips and double eyelids tapes; sunscreen preparations.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Here, the applicant’s mark is highly similar to the mark in the cited U.S. Registration.  The applicant has merely deleted the term GROOMING from the registered mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Comparison of the Goods and/or Services

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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 goods are “Bar soap; Cakes of soap; Non-medicated skin care preparations, namely, solid soaps.”

 

The goods in U.S. Registration No. 5699743 are a wide variety of personal care products including soap, hand soaps, bar soaps, beauty soaps, bath soaps and antibacterial soaps. 

 

Both applicant and registrant are providing various types of soaps.  The goods would be found in the same channels of trade and would be available to the same consumers. 

 

Further, it is well settled that where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

 

 

For the foregoing reasons consumers and potential consumers would be likely to believe that applicant’s goods and/or services emanate from the same source as those provided by the registrant. Accordingly, registration is refused under Section 2(d) of the Act.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Response

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

/Ellen J.G. Perkins/

Ellen J.G. Perkins

Trademark Examining Attorney, Law Office 110

U.S. Patent & Trademark Office

571 272-9372

Ellen.Perkins@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/20/2019 FOR U.S. APPLICATION SERIAL NO. 87503455

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/20/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Ellen J.G. Perkins/

Ellen J.G. Perkins

Trademark Examining Attorney, Law Office 110

U.S. Patent & Trademark Office

571 272-9372

Ellen.Perkins@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.