United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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: May 10, 2020
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
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No.
5912643. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached
registration.
The applicant applied to register the mark FORGIVEN for “Non-medicated personal care preparations, namely, facial cleansers, facial mists, skin serums, nourishing skin care masks,
non-medicated lip balms, sheet masks and moisturizing creams; personal care kits comprising non-medicated facial cleansers, non-medicated body mists, non-medicated skin serums, and non-medicated skin
care masks; non-medicated lip balms; cosmetics and cosmetic preparations; non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; skin softeners; skin
texturizers; beauty creams for body care; body and beauty care cosmetics.” The registered mark is FORGIVEN for “cologne; perfume; perfumes and colognes; eau de cologne; eau de perfume; eau de
toilette and eau de cologne; eau-de-cologne.” The marks of the parties are confusingly
similar.
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 and/or services 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). Any evidence of record related to those factors need be considered; however,
“not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376,
1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir.
1997)).
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, the marks of the parties are identical. There is nothing to distinguish the parties’ marks. Therefore, the marks are confusingly similar.
Goods/Services Compared
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in
the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012);
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01,
1207.01(a)(vi).
The compared goods and/or services 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). The goods of the parties are highly similar as they specialized in cosmetics. These goods are usually provided, produced, manufactured or marketed together.
Additionally, the goods travel through a common trade channel, thus consumers may assume the goods are emanating from a common source. Accordingly, application is refused registration under Section
2(d).
Although applicant’s
mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of
registration.
RESPONSE
GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney
cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See
TMEP §§705.02, 709.06.
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.
/Zachary
Bello/
Attorney
Advisor
Law Office
111
USPTO
571-272-9376
zack.bello@uspto.gov
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause
the application to abandon. A response or
notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA
maintenance or unforeseen circumstances could affect an applicant’s
ability to timely respond.
