To: | WORLD WAY CO., LTD. (yshgroup@ipfirm.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88228701 - SHINE - 5230-0848TM |
Sent: | 4/24/2019 6:37:25 PM |
Sent As: | ECOM107@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. 88228701
MARK: SHINE
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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: WORLD WAY CO., LTD.
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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: 4/24/2019
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.
Applicant has applied to register the mark with a design for “SHINE” with two Chinese Characters both meaning “BEAUTY” in International Class 003 for a variety of lotions, toners, creams, shampoos, and beauty soap.
Registration is refused due to a likelihood of confusion with the following marks:
1) “SHINE” in International Class 003 for “Aromatic preparations, namely, perfumed soap and lotion; Cologne; Eau de perfume; Eau de toilette; Fragrances for personal use” (U.S. Reg. No. 4315649); and
2) “SHINE” in International Class 003 for “Hair care products, namely shampoo and conditioner” (U.S. Reg. No. 3014301); and
3) A design mark in Chinese Characters, which translates to “BEAUTIFUL SHINING,” for “body soaps, face creams, hair shampoos, hand creams, body lotions, and facial lotions” (U.S. Reg. No. 1811776)
Comparison of the 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).
In the present case, applicant is applying for the mark “SHINE” with Chinese Characters afterwards and Reg. Nos. 4315649, and 3014301 share the identical term “SHINE.” Although applicant’s mark has additional Chinese characters in the mark, the word “SHINE” is presented before the Chinese Characters, such that it makes its own unique impression. As such, consumers are likely to utilize the same term “SHINE” for both applicant’s and registrants’ goods. Therefore applicant’s mark is confusingly similar to both of registrant’s marks, as all of the marks have similar appearances and meanings.
Applicant’s mark is partially in Mandarin Chinese, whereas the registrant’s mark is entirely in Mandarin Chinese. The language is a common, modern language in the United States. In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986).
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Chinese language is a common, modern language spoken by an appreciable number of consumers in the United States.
In the present case, applicant has the word “SHINE” in English next to the Chinese Character that is equivalent to the English word “BEAUTY.” Registrant’s mark has the identical Chinese Character for “BEAUTY” placed first before the Chinese Character for the word “SHINING.” Therefore, applicant’s mark translates to “SHINE BEAUTY,” whereas registrant’s mark translates to “BEAUTY SHINING.” The marks share identical impressions but for the placement of the words and the word “SHINE” being used by applicant, rather than “SHINING” by registrant. Nonetheless, the overall impression of the mark conveys a similar meaning, and appearance (particularly with the shared usage of the Chinese Character for the word “BEAUTY”). As this is the case, the proposed mark is likely to be confused with the cited reference when used in connection with identical or closely related goods.
Comparison of the Goods
In the present case, U.S. Registration Nos. 3014301 and 1811776 both list “shampoo” as goods that they provide. Applicant also lists “shampoo” as a good that they provide in their identification.
With regards to U.S. Registration No. 4315649, registrant has identified “perfumed soap” as a good they provide, whereas applicant provides “beauty soap.” For the purposes of this analysis, the goods are so closely related that they could be said to be identical in nature. For example, the attached from Target demonstrates that beauty soap is often perfumed or scented.
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and each of the registrations are identical in part and otherwise closely related. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Conclusion
In the present case, the parties utilize marks featuring the same dominant terms, and conveying highly similar, if not identical, overall impressions in connection with closely related and identical goods. Therefore, registration is refused under Trademark Act Section 2(d).
TRANSLITERATION AMENDMENT REQUIRED
The non-Latin characters in the mark transliterate to "MEE" and this means "beauty" in English.
37 C.F.R. §§2.32(a)(10), 2.61(b); TMEP §§809, 809.03.
APPLICANT MUST AMEND ENTITY TYPE
Applicant has entered “WORLD WAY CO., LTD.” as the name of the owner of the mark. However, in the legal entity field, applicant has designated the owner of the mark as a “Corporation.” Per Appendix D of the Trademark Manual of Examining Procedure (TMEP), entities from South Korea with the designation “CO. LTD.” must list their legal entity as either being a “limited company,” or a “limited liability company.” Applicant must therefore amend its legal entity status to that of a “limited company” or “limited liability company.”
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.
/Bradley Goran/
Examining Attorney
USPTO
Law Office 107
(571) 270-7482
bradley.goran@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.