United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88188662
Mark: HIGH MAINTENANCE
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Correspondence Address: 1760-F AIRLINE HIGHWAY PMB 220
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Applicant: HIGH BEAUTY, INC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 25, 2019
This Office action is in response to applicant’s communication filed on June 26, 2019 in which applicant argues in favor of registration over the cited registration.
FINAL REFUSAL FOR LIKELIHOOD OF CONFUSION
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3736666. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Applicant argues that the proposed mark is weak and the goods are not related as the consumers differ.
In this case, applicant seeks registration of the wording HIGH MAINTENANCE for use in conjunction with “Skin care preparations, namely, skin peels” and the registrant is using its mark HIGH MAINTENANCE in conjunction with “Hand lotions; Hand soaps.”
MARKS ARE IDENTICAL
In the present case, applicant’s mark is HIGH MAINTENANCE and registrant’s mark is HIGH MAINTENANCE. 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.
Therefore, the marks are confusingly similar.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Nevertheless, with respect to applicant’s argument that the proposed mark is weak, attached hereto is a copy of the results screen from a search of the Office’s X-Search database conducted on July 24, 2019 and copies of registered marks referenced therein which shows that the registered mark and other marks owned by the same registrant are the only registrations for the wording “HIGH MAINTENANCE” in International Class 3. Accordingly, evidence shows the combination of the wording “HIGH MAINTENANCE” is strong with respect to goods similar to those of the registration, such as other personal care preparations.
GOODS ARE CLOSELY RELATED
In this case, applicant intends to use the proposed mark with “Skin care preparations, namely, skin peels” and the registrant is using its mark in conjunction with “Hand lotions; Hand soaps.” Evidence shows that these goods are closely related and often found from the same source.
The attached Internet evidence, consisting of excerpts from http://epicuren.com, http://glymedplus.io, www.skin911.com, http://skinpeelshop.com, and www.kiehls.com further establishes that skin peels are provided as a type of lotion and the same entity commonly provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s 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 evidence showing that applicant’s goods are closely related to those of the registrant, the refusal under Trademark Act Section 2(d) is maintained and made FINAL.
RESPONSE OPTIONS
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Verna B. Ririe/
Trademark Attorney
Law Office 104
(571) 272-9310
(571) 273-9104 (office fax)
verna.ririe@uspto.gov
RESPONSE GUIDANCE