To: | Muse Cosmetics LLC (dmarlan@umich.edu) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87707217 - MUSE - N/A |
Sent: | 6/23/2018 2:43:41 PM |
Sent As: | ECOM123@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87707217
MARK: MUSE
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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: Muse Cosmetics LLC
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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: 6/23/2018
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
This Office action is in response to applicant’s communication filed on June 5, 2018.
This Office action is also supplemental to and supersedes the previous Office action issued on March 16, 2018 in connection with this application. Based on information in applicant’s response, the trademark examining attorney now issues the following new requirements: Amendments to the Identification of Goods Required; Amendments to the Identification of Goods exceeds Goods in Application. See TMEP §§706, 711.02.
In a previous Office action dated March 16, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks. In addition, applicant was notified of a prior-filed application.
In the Response filed on June 5, 2018, applicant amended the identification of goods. Applicant did not provide arguments against the refusals, nor prior-filed application. As such, the refusals and advisory of the prior-filed application are continued and maintained.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous March 16, 2018 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Amendments to the Identification of Goods exceeds SCOPE OF THE Goods in Application
In this case, the application originally identified the goods as follows: “Cosmetic preparations; Cosmetics” in International Class 3. These goods were correctly classified and definite identifications in compliance with the TEAS Plus filing requirements. See TMEP §819.01.
However, the proposed amendment identifies the following goods: “Makeup; makeup preparations; makeup accessories and applicators; makeup removers; beauty and personal-care products”.
The wording “makeup accessories and applicators” and “beauty and personal-care products” of the proposed amendment is beyond the scope of the original identification because these wordings include goods that are not classified in International Class 3, change the types of goods, and broaden the types of goods.
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
Amendments to the Identification of Goods Required
In the Response filed on June 5, 2018, applicant amended the identification of goods. The application originally identified the goods as follows: “Cosmetic preparations; Cosmetics” in International Class 3. The original goods were correctly classified and definite identifications in compliance with the TEAS Plus filing requirements. See TMEP §819.01.
As such, applicant should incorporate the limitations of the goods into the original definite identifications. Please see the recommendations for revision below.
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.
Applicant may adopt the following identification, if accurate:
International Class 3: Cosmetic preparations in the nature of makeup preparations and makeup removers; Cosmetics in the nature of makeup; Makeup; makeup preparations; makeup
accessories and applicators; makeup removers; beauty and personal-care products
Section 2(d) Refusal – Likelihood of Confusion
In the Response filed on June 5, 2018, applicant did not provide arguments against the refusals, nor prior-filed application. As such, the Section 2(d) refusals and the below advisory of the prior-filed application are continued and maintained.
In the present case, the applied-for mark is MUSE in standard characters for use with “Cosmetic preparations; Cosmetics” in International Class 3.
The registered mark in U.S. Registration No. 5324099 is MUSE in standard characters for use with “Fragrances and perfumery” in International Class 3.
The registered mark in U.S. Registration No.4192575 is NEW YORK MUSE in standard characters for use with “Toilet soaps, perfumes; eau de Cologne; eau de toilette; cosmetics; essential oils for personal use; perfumed milk for face and body, perfumed lotions for face and body, perfumed creams for face and body, perfumed emulsions for face and body, perfumed gels for face and body; deodorants for personal use (perfumery articles); cosmetic hair lotions” in International Class 3.
COMPARISON OF THE MARKS
Here, the applied-for mark is MUSE in standard characters.
The registered mark in U.S. Registration No. 5324099 is MUSE in standard characters.
The registered mark in U.S. Registration No.4192575 is NEW YORK MUSE in standard characters.
The applied-for mark and the registered mark in U.S. Registration No. 5324099 are both MUSE. These 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), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). 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. Id.
The registered mark in U.S. Registration No.4192575 is NEW YORK MUSE has disclaimed the wording “NEW YORK”. 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). Disclaimed matter that is descriptive of a party’s goods is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “MUSE” the more dominant element of the mark.
The applied-for mark merely removes the wording “NEW YORK” to the registered mark in U.S. Registration No.4192575. 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 USPQ707, 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 wordings “MUSE” are identical in each of the marks.
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS
Determining likelihood of confusion is based on the description of the goods stated in the application and registrations at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Here, the applied-for mark is for use with “Cosmetic preparations; Cosmetics” in International Class 3.
The registered mark in U.S. Registration No. 5324099 is for use with “Fragrances and perfumery” in International Class 3.
The registered mark in U.S. Registration No.4192575 is for use with “Toilet soaps, perfumes; eau de Cologne; eau de toilette; cosmetics; essential oils for personal use; perfumed milk for face and body, perfumed lotions for face and body, perfumed creams for face and body, perfumed emulsions for face and body, perfumed gels for face and body; deodorants for personal use (perfumery articles); cosmetic hair lotions” in International Class 3.
Applicant and registrant in U.S. Registration No.4192575 both provide “cosmetics” and types of cosmetic preparations. In addition, the Internet evidence attached in the previous Office action issued on March 16, 2018 from Urban Decay, Revlon, and Mary Kay establishes that the same entity commonly manufactures and provides the relevant goods, namely, fragrances, perfumes, and cosmetics, and markets the goods under the same mark. Thus, applicant’s and registrants’ goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The trademark examining attorney also attached in the previous Office action issued on March 16, 2018, evidence from the USPTO’s X-Search database consisting of third-party marks registered for use in connection with the same or similar goods as those of applicant and registrants in this case. This evidence shows that the goods listed therein are of a kind that may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).
Therefore, applicant and registrants’ goods are related.
Because the marks are the confusingly similar and the goods are related, there is a likelihood of confusion and registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. In addition, applicant should note the following advisory.
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 mark in the referenced application. 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 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.
/Rebecca T. Caysido/
Examining Attorney
Trademark Law Office 123
(571) 270-0926
Rebecca.Caysido@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.