| To: | Share Skincare Inc. (pctrademarks@perkinscoie.com) |
| Subject: | U.S. Trademark Application Serial No. 88155327 - SOLUTION - 130432-4001 |
| Sent: | May 10, 2020 09:52:06 PM |
| Sent As: | ecom120@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
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. 88155327
Mark: SOLUTION
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Correspondence Address: |
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Applicant: Share Skincare Inc.
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Reference/Docket No. 130432-4001
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: May 10, 2020
Applicant filed a Request for Reconsideration on April 15, 2020. The Request for Reconsideration included a request for the following Class 44 services to be divided out from the application: “Web-based health assessment services, namely, a series of health-related questions for response from the user that result in a report that provides health-related information in the form of recommended educational resources; Consultation services in the field of health, wellness, and nutrition; Wellness analysis to determine dietary supplements and formulas of dietary supplements that are best suited to particular individuals, namely, medical testing for treatment purposes; Health care services, namely, preparation of personalized dietary supplements for others for treatment purposes; Providing a website featuring information on health and nutrition, wellness and cosmetic skin care services.” However, the record reflects that applicant has not filed an actual request to divide certain classes and/or paid the associated fee.
In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions). There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Applicant’s Request for Reconsideration also contained arguments and evidence against the refusal under Trademark Act Section 2(d) that applies to Class 44 only. Specifically, applicant argued that 1) services under applicant’s mark are unrelated to the services under the cited marks and 2) consumers of services under applicant’s mark do not overlap with the consumers under the cited marks. Applicant’s arguments are addressed in relation to the services.
As an initial matter, applicant’s summary of its services in Class 44 is a broad generalization that does not convey accurately the services that applicant has identified in Class 44. Applicant characterized itself as a “commercial beauty brand that provides personalized skincare”. However, the record reflects that applicant’s Class 44 services are identified as “Web-based health assessment services, namely, a series of health-related questions for response from the user that result in a report that provides health-related information in the form of recommended educational resources; Consultation services in the field of health, wellness, and nutrition; Wellness analysis to determine dietary supplements and formulas of dietary supplements that are best suited to particular individuals, namely, medical testing for treatment purposes; Health care services, namely, preparation of personalized dietary supplements for others for treatment purposes; Providing a website featuring information on health and nutrition, wellness and cosmetic skin care services.” The noted identifications are in the nature of, inter alia, medical, health, wellness, and nutrition analysis, assessment, consultation, and information services. Applicant’s generalization as a “commercial beauty brand that provides personalized skincare” diminishes the breadth of its identified services because applicant’s provision of information on the health, nutrition, and wellness skin care extend beyond the cosmetic and/or commercial scope.
Applicant provided that it 1) has nothing to do with dermatologists or goods and/or services that may be provided by dermatologists, 2) does not offer geriatric healthcare management services, namely, wound care, medical information, and specialized skin care regimens to elderly consumers who reside in assisted living facilities, and 3) evidence of parties providing medical skincare management services does not provide that these parties also commonly offer applicant’s commercial, beauty skincare products or that applicant provides geriatric healthcare services. Applicant maintained that its services are unrelated to the services offered under the cited mark. Further, applicant reasoned that there is no overlap in consumers because it provides personalized skincare system based on each consumer’s needs and its consumers use the services for the purpose of achieving beautiful skin via basic skincare items including, but not limited to, moisturizer and serum, whereas the relevant consumers of the cited marks are highly sophisticated seniors who are seeking geriatric services and are not interested in buying beauty skincare products. Applicant submits that there is no evidence that clinicians looking for medical, health, and geriatric services would seek to purchase beauty skincare products. Therefore, it is unlikely that the relevant consumers of the cited marks would be confused with applicant’s mark.
Applicant’s arguments focus on its provision of services that are different from those of the cited marks. However, the fact that the services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source or sponsorship of those services. See 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. In this case, the relevant services of applicant and the registrants are commonly provided by the same entity. Applicant’s relevant services are provided above and registrants’ services are as follows: U.S. Registration No. 2309323- “SOLUTIONS” provides “healthcare information services, namely, providing information in the area of wound and skin care management” in Class 42, U.S. Registration No. 3989747- “SOLUTIONS” provides “Medical information” in Class 44, and U.S. Registration No. 3700519- “SOLUTIONS” provides “Health care” in Class 44. The attached internet evidence shows that the same entity commonly provides applicant’s and registrant’s services:
The attached evidence demonstrates that the same entity commonly provides the relevant services and markets the services under the same mark and the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Applicant’s presumption that consumers of its services differ from consumers of the registrant’s services is inconsistent with the evidence of record because applicant’s and registrants’ services are in the field of healthcare. Applicant’s argument that its services are used by consumers to then purchase cosmetic goods is not relevant to the comparison of services in this case. However, if such argument were relevant, the additional third-party evidence shows that the same entity commonly provides cosmetic products in the same trade channels as applicant’s and registrant’s services:
The evidence provides that applicant’s and registrant’s services have consumer overlap. Further, the fact that purchasers are sophisticated or knowledgeable in a particular field, as applicant contends, 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). Where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
In conclusion, there is a likelihood of confusion. Thus, the refusal under Trademark Act Section 2(d) is maintained and all prior arguments and evidence are incorporated herein.
The application is suspended for the reasons specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until disposition of cited registrations. Registration maintenance documents are or were due to be filed for U.S. Registration Nos. 2309323 and 3700519, both of which were cited against applicant in a refusal based on Trademark Act Section 2(d). 15 U.S.C. §1052(d). If the maintenance documents are not timely filed and accepted by the USPTO, the cited registrations will cancel and/or expire and will no longer bar registration of applicant’s mark under Section 2(d). See 15 U.S.C. §§1058, 1059, 1141k. Action on this application is suspended for six months to await disposition of the cited registrations; after which, the trademark examining attorney will determine whether to maintain or withdraw the Section 2(d) refusal. See 37 C.F.R. §2.67; TMEP §716.02(e).
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.
/Shari Gadson/
Trademark Examining Attorney
Law Office 120
United States Patent and Trademark Office
571-272-9319
shari.gadson@uspto.gov
