United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88298731
Mark: AFTER HOURS
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Correspondence Address: |
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Applicant: The Procter & Gamble Company
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) 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 20, 2020
This Office action is in response to applicant’s communication filed on June 30, 2020 (the “Response”).
In a previous Office action dated December 30, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark was previously refused because of a likelihood of confusion with the mark in U.S. Registration No. 5765512. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration attached to the Prior Action.
In the Response, Applicant has argued that it has a prior registration for an identical mark, and that the goods in the application are sufficiently different from the goods in the cited registration. However, for the reasons set forth below, the examining attorney is unpersuaded at this time and the refusal to register the mark pursuant to Section 2(d) of the Trademark Act is made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
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 and/or services. 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 seeks to register the mark “AFTER HOURS” in standard characters for “Hair care preparations” in International Class 003.
Registrant’s mark is “AFTER HOURS” in standard characters for “Hair dryers; Hair dryers for beauty salon use; Hand-held electric hair dryers” in International Class 011 and “Hair brushes; Electric rotary hair brush for styling a user's hair; Electrically-heated hair brushes; Hot air hair brushes” in International Class 021.
Similarity of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is “AFTER HOURS” in standard characters and registrant’s mark is “AFTER HOURS” 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 and/or services. Id.
Therefore, the marks are confusingly similar.
Applicant has not argued that the marks are not similar, and therefore, to the extent the Response is an arguments against the similarities of the marks, it is unpersuasive.
As set forth above, Applicant’s mark “AFTER HOURS” is confusingly similar with registrant’s mark in U.S. Reg. No. 5765512. Next, the goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.
Similarity or Relatedness of the Goods
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registrations at issue, not on 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)).
Here, the goods identified by Applicant are “Hair care preparations” in International Class 003.
The goods identified by registrant are “Hair dryers; Hair dryers for beauty salon use; Hand-held electric hair dryers” in International Class 011 and “Hair dryers; Hair dryers for beauty salon use; Hand-held electric hair dryers” in International Class 021.
In addition to the evidence attached to the Prior Action from Revlon, Drybar, and Amika, the additional Internet evidence from Bed Head, Chi, Devacurl, Paul Mitchell, and MoroccanOil, attached to this current Office Action, establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use, and the goods are similar or complementary in terms of purpose or function. 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).
Finally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
In the Response, Applicant argues that even though the goods have complementary use, consumers would not actually find them to be sufficiently related; that they are sufficiently different because they are located in different aisles in the store; and that Applicant has a prior registration for other goods that are more closely related to the goods in the Application than the goods in the registration are to the goods in the Application, and therefore, based on all three reasons separately or in combination, there is no likelihood of confusion. Finally, Applicant has argued that the board has previously allowed similar or identical marks to co-exist for similar goods before.
As to Applicant’s argument that the goods are not sufficiently related in and of themselves, the attached evidence to the Prior Action and to this current Office Action from Revlon, Drybar, Amika, Bed Head, Chi, Devacurl, Paul Mitchell, and MoroccanOil clearly establishes that it is common for hair care products and hair dryers and hair brushes all to emanate from the same source.
As to Applicant’s argument that it has a prior registration for goods that are more related to the applied-for goods than the registrant’s goods, this does not appear to be the case. While the examining attorney will concede that the goods in Applicant’s prior registration, antiperspirants, and deodorants, can be related to the applied-for goods, there is no evidence that they are more related to the goods in the application than the goods in the registration are, as compared to the applied-for goods. Further, while antiperspirants and deodorants are generally applied to a person’s body, they are never applied to a person’s hair. By contrast, hair care preparations, hair brushes, and hair dryers are not just generally used on a person’s body, but in specific, all are used on the exact same part of the body, the hair, on which, again, antiperspirants and deodorants are NOT used. Therefore, as on their face, both the goods in the Applicant’s prior registration and the goods in the cited registration are related to the applied-for goods, what then makes them in fact more related to the goods in the cited registration is that they are directly complementary goods. Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”).
This is almost directly analogous to the facts in Polo Fashions, Inc. v. La Loren, Inc., in which bath sponges and bath oils and soaps were complementary goods because they are likely to be purchased together and used by the same purchasers. Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984). Here, a consumer purchasing hair care products is also likely to be a consumer in the market for hair brushes and hair dryers.
Moreover, because the cited registration and Applicant’s prior registration have only existed for less than five years, the holding in In re Strategic Partners, Inc. does not apply as to their coexistence. In In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration is not for the same mark or goods and has not co-existed for at least five years with the cited registration. Thus applicant’s prior registration does not obviate the Section 2(d) refusal.
Next, based on the foregoing, as to Applicant’s argument that the goods are found in different aisles in the store, or that they are “categorized” differently by manufacturers or retailers on their websites, because the marks are identical here, and because the goods clearly have highly complementary uses and are likely to be purchased by the same consumers and even used together, the fact that they might be found in different aisles or sections really does not affect the analysis that the marks are confusingly similar as to these goods.
As to Applicant’s argument that the Board has allowed similar or identical marks to register before for similar goods, Applicant’s cases are for goods that are energy alcohol drinks vs wine, fruit drinks vs coffee, hair shampoo and antacid vs. liquid drain cleaner, and vitamins vs. epoxy-based roof coating, and patch filler products. While as an initial point, the Examining Attorney would contest that some of these are not even related at all to each other, let alone being “similar goods”, none of these have any ounce of relatedness to the question about the goods at hand here: whether hair care products are highly related to hair brushes and hair dryers, and whether the use of 100% IDENTICAL marks would be confusingly similar. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Finally, as to Applicant’s arguments that its consumers are sophisticated, this does not seem to either be true or relevant here. The attached evidence from Revlon, Drybar, Amika, Bed Head, Chi, Devacurl, Paul Mitchell, and MoroccanOil clearly establishes that some hair care products can be low-priced goods. For products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)).
Further, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Here, at a minimum, the use of identical marks on what the evidence shows are highly related goods, there is doubt that the applied-for mark could be confusingly similar with the registered mark.
Therefore, based on the foregoing, none of Applicant’s arguments are persuasive.
Accordingly, Applicant’s goods are sufficiently related to the goods identified in U.S. Registration No. 5765512.
Conclusion
Based on the foregoing, the refusal to register the applied-for mark, pursuant to Trademark Act Section 2(d), due to a likelihood of confusion with U.S. Trademark Registration No. 5765512, is hereby made FINAL.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney to resolve the issues in this Office action. Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
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.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Roth, Benjamin
/Benjamin H. Roth/
Examining Attorney
Law Office 122
(571) 272 -5266
benjamin.roth@uspto.gov
RESPONSE GUIDANCE
