UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88199188
MARK: FAWN
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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: Fawn Design, 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: 2/22/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
Section 2(d) Refusal – Likelihood of Confusion
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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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 the present case, the applied-for mark is FAWN in standard characters for use with “Belt bags and hip bags; Diaper bags; Fanny packs; Garment bags for travel made of leather; Handbags; Imitation leather; Leather bags, suitcases and wallets; Leather credit card wallets; Leather handbags; Leather purses; Leather and imitation leather bags; Pouches made from imitation leather; Pouches for holding make-up, keys and other personal items; Travelling cases of leather” in International Class 18.
The registered mark is FAWN in standard characters for use with “Beauty balm creams; beauty creams; beauty creams for body care; beauty gels; beauty lotions; beauty masks; beauty milks; beauty serums; beauty soap; body and beauty care cosmetics; cleaner for cosmetic brushes; cosmetic creams; cosmetic creams for skin care; cosmetic facial blotting papers; cosmetic masks; cosmetic preparations for body care; cosmetic preparations for eye lashes; cosmetic preparations for skin care; cosmetic preparations for skin renewal; cosmetic preparations, namely, firming creams; cosmetic preparations, namely, firming lotions; cosmetic rouges; cosmetic white face powder; cosmetics and cosmetic preparations; cosmetics and make-up; face and body beauty creams; face creams for cosmetic use; facial beauty masks; flower essences for cosmetic purposes; lip stains; make-up kits comprised primarily of organic materials in the nature of lipstick, eye shadow, eye liner, blush, mascara, cleanser, toner, moisturizer, primer, powder, foundation, concealer and makeup brushes; private label cosmetics; skin conditioning creams for cosmetic purposes” in International Class 3.
COMPARISON OF THE MARKS
Here, the applied-for mark is FAWN in standard characters.
The registered mark is FAWN in standard characters.
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.
COMPARISON OF THE GOODS
The compared goods 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).
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Here, the applied-for mark is for use with “Belt bags and hip bags; Diaper bags; Fanny packs; Garment bags for travel made of leather; Handbags; Imitation leather; Leather bags, suitcases and wallets; Leather credit card wallets; Leather handbags; Leather purses; Leather and imitation leather bags; Pouches made from imitation leather; Pouches for holding make-up, keys and other personal items; Travelling cases of leather” in International Class 18.
The registered mark is for use with “Beauty balm creams; beauty creams; beauty creams for body care; beauty gels; beauty lotions; beauty masks; beauty milks; beauty serums; beauty soap; body and beauty care cosmetics; cleaner for cosmetic brushes; cosmetic creams; cosmetic creams for skin care; cosmetic facial blotting papers; cosmetic masks; cosmetic preparations for body care; cosmetic preparations for eye lashes; cosmetic preparations for skin care; cosmetic preparations for skin renewal; cosmetic preparations, namely, firming creams; cosmetic preparations, namely, firming lotions; cosmetic rouges; cosmetic white face powder; cosmetics and cosmetic preparations; cosmetics and make-up; face and body beauty creams; face creams for cosmetic use; facial beauty masks; flower essences for cosmetic purposes; lip stains; make-up kits comprised primarily of organic materials in the nature of lipstick, eye shadow, eye liner, blush, mascara, cleanser, toner, moisturizer, primer, powder, foundation, concealer and makeup brushes; private label cosmetics; skin conditioning creams for cosmetic purposes” in International Class 3.
Therefore, applicant’s and registrant’s 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.
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.