| To: | Y.Z.Y., INC. (prodp@ix.netcom.com) |
| Subject: | U.S. Trademark Application Serial No. 88003707 - REVENGE - N/A |
| Sent: | July 24, 2020 08:37:00 PM |
| Sent As: | ecom113@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88003707
Mark: REVENGE
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Correspondence Address: |
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Applicant: Y.Z.Y., INC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: July 24, 2020
INTRODUCTION
This Suspension Letter is in response to applicant’s communication dated June 25, 2020 where applicant:
(1) argued against the Section 2(d) refusal.
The examining attorney has reviewed the applicant’s communication and determined the following:
(1) Applicant’s arguments regarding the refusal under Trademark Act Section 2(d) are unpersuasive, and that refusal is maintained and continued; and
(2) The application is suspended pending registration or abandonment of the prior pending application.
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3101988 and 5650638. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The examining attorney attached the registrations to the previous Office action.
Applicant has applied to register the standard character mark REVENGE for use in connection with “Fragrances” in International Class 3.
In Registration No. 3101988, registrant has registered the standard character mark WRINKLE REVENGE for use in connection with “Nonmedicated skin care products, namely, wrinkle fighting creams, lotions, cleansers, toners” in International Class 3. Registrant disclaimed the wording “WRINKLE”.
In Registration No. 5650638, registrant has registered the standard character mark SKIN REVENGE for use in connection with “Make-up; Non-medicated skin care preparations” in International Class 3. Registrant disclaimed the wording “SKIN”.
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 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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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. 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. 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.
Similarity 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, applicant’s standard character mark, REVENGE, is confusingly similar to the registered standard character marks SKIN REVENGE and WRINKLE REVENGE. Specifically, these marks consist in large part or entirely of the term “REVENGE”. 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). Here, because these marks consist in large part or entirely of the term “REVENGE,” they are similar in terms of sound and appearance.
Additionally, because the applied-for mark and the registered marks are all standard character marks, applicant could use its mark in a stylization and font similar or even identical to that of the registrants, which would increase the likelihood of confusion. 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).
Although the registered marks include wording not found in the applied-for mark (specifically, SKIN and WRINKLE, respectively), that fact does not obviate this refusal. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, the registrants disclaimed all of the additional wording (SKIN and WRINKLE). For purposes of Section 2(d) analysis, then, the dominant parts of the registered marks are REVENGE and REVENGE compared with the applied-for mark REVENGE.
Applicant argues that the applied-for mark should be allowed to register because the two cited marks coexist on the register. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Ultimately, when purchasers call for the goods of the applicant and the goods of the registrant using marks that are very similar in sound, appearance, and meaning, they are likely to believe that the marks identify a single source of goods. Thus the marks are confusingly similar.
Relatedness of the Goods
Applicant’s goods are identified as “Fragrances” in International Class 3.
In Registration No. 3101988, registrant’s goods are identified as “Non-medicated skin care products, namely, wrinkle fighting creams, lotions, cleansers, toners” in International Class 3.
In Registration No. 5650638, registrant’s goods are identified as “Make-up; Non-medicated skin care preparations” in International Class 3.
Applicant argues that the applied-for mark should be allowed to register because the goods in the cited registrations are more similar to each other than the goods in either cited registration is to the applicant’s goods. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)). The critical question is whether the applicant’s identified goods are related to the registrants’ identified goods.
Applicant further argues that its goods are “for fragrances,” while “neither cited mark identifies goods that apply to the sense of smell. Both cited marks cover goods for skin care, impacting the sense of sight (wrinkle fighting) and touch (smooth skin).” Applicant has cited to no case law or other legal authority in support of its proposition that goods are unrelated unless they “apply” to the same sense. Rather, the actual test of relatedness is whether the goods are “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 examining attorney has provided evidence showing that applicant’s and registrants’ goods are sold by the same entity under the same mark. This evidence is sufficient to establish that the goods are related.
Ultimately, when purchasers encounter the applicant’s goods and the registrant’s goods, they are likely to be confused as to the source of the goods by the relationship between them. Thus, the goods are related.
Therefore, because the marks are confusingly similar and the goods are related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
The application is suspended for the reason specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending application below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application below was sent previously.
- U.S. Application Serial No. 87670000
Refusal maintained and continued. The following refusal is maintained and continued:
• Section 2(d) Likelihood of Confusion Refusal
See TMEP §713.02.
This refusal will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Dana Dickson/
Dana Dickson
Examining Attorney
Law Office 113
571.270.7552
Dana.Dickson@USPTO.gov