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. 88313688
Mark: MARTINI
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Correspondence Address:
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Applicant: Young, Gary George
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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) 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: November 13, 2019
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.
INTRODUCTION
Applicant’s response of October 22, 2019, to the office action of May 4, 2019, has been reviewed and the following determinations have been made.
Applicant’s arguments have been considered, however, the Section 2(d) Refusal is now made FINAL for the reasons provided below.
Summary of Issues: (*) Indicates Issues Applicant Must Address:
FINAL REFUSAL - SECTION 2(d) REFUSAL - LIKELIHOOD OF CONFUSION
In the office action of October 22, 2019, registration of the application was refused because of a likelihood of confusion with the mark(s) in US Reg. No(s). 5709271. The refusal is made FINAL for the reasons stated below.
Applicant has applied to register the mark MARTINI for (Class 3) Fragranced facial moisturizer; Fragrances; Fragrances and perfumery; Fragrances for personal use; Body spray used as a personal deodorant and as fragrance; Pre-scented strips and cards for sampling fragrances
The registered mark is MARTINNI for (Class 3) Non-medicated exfoliating preparations for skin; non-medicated lotions for skin, face and body; Non-medicated skin care preparations; non-medicated stimulating lotions for the skin; Skin abrasive preparations; Skin and body topical lotions, creams and oils for cosmetic use; Skin care preparations, namely, chemical peels for skin; Skin care preparations, namely, fruit acid peels for skin; Skin care products, namely, non-medicated skin serum; Skin clarifiers; Skin cleansers; Skin conditioners; Skin creams; Skin emollients; Skin lighteners; Skin lightening creams; Skin masks; Skin moisturizer; Skin moisturizer masks; Skin toners; Skin whitening preparations; Wrinkle removing skin care preparations; Body scrub and face scrub.
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). 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 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.
A. COMPARISON OF THE MARKS
Specifically, applicant’s mark MARTINI and registrant’s mark MARTINNI are virtually identical in appearance and differ only by the presence of an additional letter “N” in registrant’s mark. Moreover, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
When considered in their entireties, applicant’s mark conveys the same overall commercial impression as the registered mark such that consumers are likely to regard the mark of the applicant and that of the registrant as confusingly similar.
B. COMPARISON OF THE GOODS/SERVICES
Registration was also refused because the goods and/or services of the applicant and registrant are related and likely to travel in the same channels of trade and to be encountered by the same group or class of purchasers.
In the present case, applicant’s and registrant’s goods overlap with respect to “moisturizers”. The remaining goods are related in that all are types of cosmetic products that often originate from a common source or are sold in the same channels of trade.
The previous office action contained evidence in the form of printouts of third-party Registration Nos. 5714683; 5689622; 5670620; 5731156; and 5303176 obtained from the USPTO X-Search database show a single mark used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. (See attachments in the May 4, 2019 office action) These printouts have probative value to the extent that they serve to suggest that the goods of the applicant and the goods of the registrant are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
The attachments from the following third-party websites are additional evidence that the goods of the parties are related and travel in the same channels of trade:
http://www.philosophy.com/ (skin care products including moisturizers; fragrances)
http://www.elizabetharden.com/ (skin moisturizers, masks, serums, creams; fragrances)
http://www.yslbeautyus.com/ (skin care moisturizers, oils, serums, creams; fragrances)
http://www.maccosmetics.com/index.tmpl (skin care products; fragrances)
http://www.lancome-usa.com/ (skin care products; fragrance)
http://www.avon.com/ (skin care products; perfume/fragrance)
http://www.marykay.com/ (skin care products; scents/fragrances)
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
C. RESPONSE TO APPLICANT’S ARGUMENTS
In response to this refusal, applicant argues that confusion is not likely because the channels of trade are different. Specifically, applicant argues that its own market is the “high-end fragrance market” whereas registrant’s goods are skin and exfoliating preparations. This argument is not persuasive to overcome the refusal because the goods need not be identical or even competitive to find a likelihood of confusion. 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.
In the present case, registrant’s goods are skin care products and applicant’s goods are facial moisturizers and fragrances. The goods overlap with respect to the moisturizers. Additionally, the evidence submitted shows that it is commonplace for a single source to produce and sell both skin care products and fragrances under the same mark. Therefore, consumers already familiar with registrant’s MARTINNI brand of skin care preparations are likely to mistakenly believe that applicant’s MARTINI brand of fragrances originates from the registrant or vice versa.
Applicant’s suggestion to amend the identification of goods to “eliminate the fragranced facial moisturizer” is not persuasive to overcome the refusal because the evidence establishes that applicant’s fragrance products and registrant’s skin care products are of a type that can originate from a single source. Thus, the evidence establishes that these goods are related for purposes of likelihood of confusion.
Applicant’s suggestion to “alter” the application to include a “stylized Martini logo” is also not persuasive to overcome the refusal because the addition of a logo to the present standard character mark would be a material alteration that would require an additional search and thus, would not be accepted.
Finally, applicant’s claim of ownership of four prior registrations is also not persuasive to overcome the present refusal because the prior registrations are for unrelated goods, namely, clothing, jewelry/watches, sunglasses, and bags. Unlike the prior registrations, the present application is for cosmetic related goods which are sold in the same channels of trade as the registrant’s goods.
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Since the marks are similar and the goods and channels of trade are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Based on the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made FINAL.
PROPER RESPONSE TO A FINAL ACTION
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Deborah Lobo/
Trademark Examining Attorney
Law Office 109
571-272-3263
deborah.lobo@uspto.gov
RESPONSE GUIDANCE
