To: | Nuka Enterprises, LLC (trademarks@brandandbranch.com) |
Subject: | U.S. Trademark Application Serial No. 88256812 - GLISS - N/A |
Sent: | September 10, 2019 10:44:29 AM |
Sent As: | ecom118@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88256812
Mark: GLISS
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Correspondence Address: SHABNAM MALEK AND AMANDA R. CONLEY 1305 FRANKLIN STREET, SUITE 220
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Applicant: Nuka Enterprises, LLC
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks in General
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).
Comparison of the Goods in General
Analysis of the Marks
Applicant’s mark, GLISS, is confusingly similar to the registered mark, GLISS and GLISS HAIR REPAIR, in sound, appearance, meaning or connotation and overall commercial impression. Each of the marks feature the identical wording GLISS.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods (such as HAIR REPAIR in registrant’s mark) 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).
In this case, the marks share the identical wording GLISS which is the dominant and initial portion of each of the marks. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); TMEP §1207.01(b)(ii)-(iii).
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, a consumer encountering the mark GLISS in connection with applicant’s goods will incorrectly believe that the goods originate from the same source as registrant’s GLISS and GLISS HAIR REPAIR goods.
Analysis of the Goods
Applicant’s goods are:
essential oils; cosmetic oils; cosmetic creams; cosmetic preparations for skin care; cosmetic powder; body care products, namely, body, hand and facial creams, bath and skin lotions, skin moisturizers and moisturizing lotions, and body wash; lipstick; eyeshadow; mascara; eyeliner
Registrant’s goods are:
Hair care preparations; Hair styling preparations
To the extent that both of the parties provide beauty products, the goods are closely related.
http://cbddailyproducts.com/product-category/all-products
Hair care preparations and creams, lotions, and oils
Hair care preparations and creams and lotions
http://www.kiehls.com/hair/view-all-hair/
http://www.kiehls.com/skincare/view-all-skincare/
Hair care preparations and creams, lotions, and oils and other beauty products
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).
Summary of Analysis
A consumer encountering the mark GLISS in connection with applicant’s goods will incorrectly believe that the goods originate from the same source as registrant’s GLISS and GLISS HAIR REPAIR goods. As a result, because of the confusingly similar marks and closely related goods, registration is refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the refusal(s)/requirement(s) set forth below.
CSA REFUSAL
Registration is refused because the applied-for mark encompasses goods that were not in lawful use in commerce as of the filing date of the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
To qualify for federal trademark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
Here, the items to which the proposed mark are applied include those that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. Applicant’s identified goods consist of, or include, items or activities that are prohibited by the CSA, namely, “essential oils; cosmetic oils; cosmetic creams; cosmetic preparations for skin care; cosmetic powder; body care products, namely, body, hand and facial creams, bath and skin lotions, skin moisturizers and moisturizing lotions, and body wash; lipstick; eyeshadow; mascara; eyeliner”.
Cannabidiol (CBD) is a nonpsychoactive constituent of the cannabis plant. Applicant’s identified goods are broad enough to include products produced from “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16)(definition of “marihuana” – commonly referred to as “marijuana”).
The New Cannabis Ventures websites at http://www.newcannabisventures.com/lexaria-bioscience-and-nuka-enterprises-1906-expand-cannabis-product-relationship/ and http://www.newcannabisventures.com/1906-cannabis-edibles/ attached as well as screenshots from applicant’s website http://1906newhighs.com/about (accessed on September 10, 2019) confirm that applicant is engaged in the cannabis industry and applicant’s identification of goods confirm that the goods contain hemp/cannabis/CBD.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) The claimed use of the applied-for mark in connection with such goods was not in lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
On December 20, 2018, the CSA was amended to remove “hemp” from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). Because the identified goods that feature cannabidiol consist of or include items that are still prohibited under the Controlled Substances Act, namely those containing cannabidiol derived from marijuana, the applicant did not have a valid filing basis for any such items or activities. To the extent the applicant’s goods are derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawful.
Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all cannabidiol-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” If accurate, applicant may adopt the following:
“essential oils; cosmetic oils; cosmetic creams; cosmetic preparations for skin care; cosmetic powder; body care products, namely, body, hand and facial creams, bath and skin lotions, skin moisturizers and moisturizing lotions, and body wash; lipstick; eyeshadow; mascara; eyeliner; all of the aforementioned goods containing cannabidiol solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis” in Class 003
The applicant may also present arguments and evidence against this refusal.
REQUIREMENT FOR ADDITIONAL INFORMATION
In addition, applicant must respond to the following questions:
1. Do or will any of applicant’s goods include or contain any preparations, oils, extracts, ingredients, or derivatives from cannabis, marijuana, or hemp?
2. Do or will applicant’s goods contain cannabidiol (CBD)? If yes, identify the source plant of the CBD, e.g., hemp, marijuana, etc. Further, is the CBD added to the goods in the form of a purified extract or isolate?
3. Do or will applicant’s goods contain tetrahydrocannabinol (THC)? If yes, indicate the amount of THC in the goods.
4. If applicant has any documentation relative to the THC and CBD content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
5. Do or will any of applicant’s goods have a delta-9 tetrahydrocannabinol concentration of more than 0.3 percent on a dry weight basis?
6. Is the applicant seeking FDA approval for any of the identified goods? If yes, please specify which goods.
7. Upon information and belief, do applicant’s goods comply with the Controlled Substances Act?
8. Upon information and belief, do applicant’s goods comply with the Federal Food, Drug and Cosmetic Act?
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
REQUIREMENT FOR ATTORNEY INFORMATION
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
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
/Ms. Tasneem Hussain
Trademark Examining Attorney
Law Office 118
tasneem.hussain@uspto.gov (preferred)
571.272.8273
RESPONSE GUIDANCE