To: | Caesars License Company, LLC (trademark@caesars.com) |
Subject: | U.S. Trademark Application Serial No. 88218117 - LIVIA - N/A |
Sent: | April 15, 2020 08:09:32 PM |
Sent As: | ecom127@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. 88218117
Mark: LIVIA
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Correspondence Address: 5865 RIDGEWAY CENTER DRIVE, SUITE 300
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Applicant: Caesars License Company, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: April 15, 2020
On March 12, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88026584. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is LIVIA, for “Perfumes, eau de cologne, toilet waters; perfumed body milks, body lotions, body gels for cosmetic purposes, body oils and body powders; perfumed bath and shower gels, perfumed soaps, perfumed moisturizing body creams, personal deodorants for the body; pre-shave and after-shave lotions, shaving foams and gels, after-shave emulsions and balms; hair shampoos; lotions, gels and emulsions all for cosmetic purposes, namely, for the care of the face, hands and body”, in Class 03.
Registrant’s mark is LIVIA LASHES, for “Adhesives for affixing false eyelashes; Artificial eyelashes; Cosmetic preparations for eyelashes”, in Class 03.
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.
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, LIVIA comprises the entirety of the applied-for mark and is the first word in registrant’s mark, LIVIA LASHES. Thus, for both of the marks, LIVIA is the mark’s dominant element. Thus, the marks are identical in significant part, and the commercial impression of the marks is substantially the same. The marks have their differences; however, these differences are insufficient to obviate a likelihood of confusion.
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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, applicant’s mark LIVIA and registrant’s mark LIVIA LASHES share an identical first word: LIVIA. While registrant’s mark contains the additional wording, LASHES, this term is less significant in creating the overall commercial impression of the mark within which it is contained because of the subordinate position as the second part of the mark as well as the fact that the wording is descriptive, and therefore disclaimed. 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).
Thus, for both of the marks concerned, the part of the mark consumers are most likely to focus on and recall is the same: LIVIA. From the foregoing, it follows that both applicant’s mark and registrant’s mark engender an overall commercial impression that is highly similar.
In short, the marks are identical in part, sharing the dominant feature LIVIA, with the additional wording LASHES not changing the overall commercial impression of these marks. Thus, when compared in their entireties, the marks are confusingly similar.
Looking at the goods, applicant’s various body and hair goods, including body oil, body powder, body milk, and shampoo is related to applicant’s false eyelashes, in that the goods are commonly sold by the same entities and in the same channels of trade, together under the same mark. The attached evidence from BH, Sephora, and Tarte show entities that sell the various body goods, as well as false eyelashes, together under the same mark and in the same trade channels.
Thus, applicant’s and registrant’s goods are related.
Use of the confusingly similar marks in relation to the related goods would lead to a likelihood of confusion. Accordingly, given the similarity of applicant’s mark to registrant’s mark, and the related nature of the goods those marks identify, there is a likelihood of source confusion. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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/Josh Galante/
Joshua M. Galante
Trademark Examining Attorney
Law Office 127
571-272-4310
Josh.Galante@uspto.gov
RESPONSE GUIDANCE