To: | Precious Beauty by Slavi (Pvt) Ltd (curt@intuitlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88176495 - TALIS - Talis |
Sent: | February 12, 2020 10:05:37 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88176495
Mark: TALIS
|
|
Correspondence Address:
|
|
Applicant: Precious Beauty by Slavi (Pvt) Ltd
|
|
Reference/Docket No. Talis
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 12, 2020
On February 7, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88017633. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL—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. 5831451. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant has applied to register the mark TALIS, for use with Body cream; Cosmetic creams for skin care; Cosmetic preparations for skin care; Facial cream; Skin care products, namely, non-medicated skin serum; Skin cream; Skin care preparations, namely, body balm. The registered mark is TALISE, for use with, inter alia, Soaps; perfumes; aftershave; aftershave balm; essential oils; cosmetics; preparations for bath and shower, namely, bath and shower gel, bath and shower foam, bath salts; creams and lotions for the skin; antiperspirant soap; antiperspirants; personal deodorants; beauty masks; bleaching preparations for cosmetic purposes; breath freshening sprays; cosmetic kits comprising of eye shadow, blush, lip gloss; cotton sticks and cotton wool for cosmetic purposes; cosmetic creams; dentifrices; deodorant soap; depilatories; disinfectant soap; cosmetic dyes, namely, hair dyes; eau de cologne; eau de toilette; ethereal oils in the nature of essential oils; emery paper for cosmetic purposes; eyebrow cosmetics; eyebrow pencils; cosmetic preparations for eyelashes, namely, mascara; false eye lashes; adhesives for fixing false hair; false nails; hair colorants; hair lotions; hair care preparations; hairsprays; hair waving preparations, namely, hair waving lotion; incense; sachets for perfuming linen; lipsticks; lotions for cosmetic purposes, namely, hand, body, face lotion; tissues impregnated with cosmetic lotions; make up; make up powder; make up preparations, namely, foundations, eye make up, blush; make up removing preparations; medicated soap; moustache wax; non-medicated mouth washes; nail care preparations; nail polish; oils for perfumes and personal scents; oils for cosmetic purposes; hair straightening preparations; cosmetic pencils; pumice stone for personal use; shampoos; shaving preparations; shaving soap; shaving gel; shaving foam; shaving cream; cosmetic preparations for skin renewal; skin whitening creams; sunscreen preparations, namely, sunscreen creams; cosmetic sun-tanning preparations; cotton swabs for cosmetic purposes; non-medicated toiletries; massage oils; facial and body moisturizers; facial and body cleansers; cosmetic preparations for tanning the skin; nail manicure and pedicure preparations, namely, nail polish, nail polish remover, nail cream; facial and body scrubs.
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 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, applicant’s mark is TALIS, as compared to registrant’s TALISE. These words differ by only one letter and therefore, the average general impression of these marks would not differ. Given the overall similarity in this wording, the marks are confusingly similar.
Comparison of Goods/Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). 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).
In this case, the registration uses broad wording to describe its cosmetic preparations and creams, which presumably encompasses all goods and/or services of the type described, including the more specifically identified goods in applicant’s list of skin care creams, serums, and balms. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Because the applied-for mark and cited mark are confusingly similar to one another, and the goods and/or services with which they are used are related to one another, applicant’s mark is refused registration based on a likelihood of confusion with the mark in U.S. Registration No. 5831451.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Laura Golden/
/Laura Golden/
Examining Attorney
Law Office 103
(571) 272-3928
laura.golden@uspto.gov
RESPONSE GUIDANCE