Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  September 20, 2019

 

Introduction

 

This Office action is in response to applicant’s communication filed on September 4, 2019.

 

In a previous Office action dated May 23, 3019, the trademark examining attorney refused registration of the applied-for mark based on a likelihood of confusion with a registered mark pursuant to Section 2(d) of the Trademark Act.   In addition, the Office action required amendment of the identification of goods.   

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement have been satisfied: amendment of the identification of goods. See TMEP §§713.02, 714.04. 

 

Upon due consideration of applicant’s response, the trademark examining attorney maintains and now makes FINAL the Section 2(d) refusal.  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

 

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. 4485427 (PURACTIVE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registration attached to the previous Office action.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

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); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

In this case, the applied-for mark is ACTIVEPUR. The registered mark is PUREACTIVE. Confusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions.  TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).

 

For these reasons, the marks are confusingly similar.

 

Comparison of the Goods

 

Applicant’s goods are identified, as amended, as:

 

Class 3: Skin care products, namely, non-medicated facial serums, eye creams, eye gel moisturizer, facial cleaner, facial moisturizer, facial toner; cosmetics; beauty products, namely, facial serums, eye creams, eye gel moisturizer, facial cleaner

 

Registrant’s goods are identified as:

 

Class 3: Cosmetological products, restricted to use by estheticians and beauty salons only, for body and face skin care, namely, creams; gels, namely, night creams and gels; concentrates and masks, namely, beauty masks, and skin masks; serums, namely, beauty serums and non-medicated skin serums; erasing creams, namely, anti-aging cream, anti-freckle cream and anti-wrinkle cream; firming and moisturizing body, skin, face and eye creams; non-medicated eye creams; exfoliating creams and gels for skin and body; hand creams; alcohol-free toning lotions for the face; gel soaps for the body and hair; revitalizing, astringent and moisturizing face, skin and body creams contained in ampules; make-up removal and eyeliner creams; regenerating body oils; body slenderizing products, namely, reducing gels; wrinkle products, namely, firming creams; firming face and skin creams; the foregoing not including preparations, supplements or other products for the treatment of acne or hyperpigmentation or dermatitis conditions, including rosacea, eczema or psoriasis or for make-up, foundation make-up, skin concealer, face powder, or sunscreen preparations

 

The question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). 

 

Absent restrictions in an application and/or registration, the identified goods 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)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods in all normal channels of trade, and are available to the same class of purchasers. 

 

Applicant’s “non-medicated facial serums” are encompassed by registrant’s “non-medicated skin serums.”

 

Applicant’s “eye creams” encompasses registrant’s “non-medicated eye creams.”

 

Applicant’s “eye gel moisturizer” is encompassed by registrant’s “gels, namely, night creams and gels” which can be used on the eyes.

 

Applicant’s “facial moisturizer” encompasses registrant’s “…moisturizing … face … creams”.

 

Applicant’s “cosmetics” encompasses registrant’s most of registrant’s goods. The attached evidence from AHDictionary.com shows that “cosmetics” can refer to “a preparation, such as a powder or a skin cream, designed to beautify the body by direct application.” Thus, applicant’s “cosmetics” encompasses most of registrant’s goods such as registrant’s “serums, namely, beauty serums and non-medicated skin serums,” “non-medicated eye creams,” etc.

 

Applicant’s “facial serums” are encompassed by registrant’s “non-medicated skin serums.”

 

Accordingly, the parties’ goods are effectively identical in this regard.

 

Regarding applicant’s “facial cleaner,” and “facial toner,” the parties’ goods 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] 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 attached Internet evidence consists of webpages from the following sources: Lancome-USA.com, Clinique.com and Loccitane.com.

 

This evidence establishes that (1) the same entity commonly manufactures applicant’s facial cleanser and facial toner and registrant’s beauty serums and markets these goods under the same mark (e.g.,, Lancome, Clinique, L’Occitane); (2) these goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, namely, consumers can readily obtain beauty serums and facial cleansers and toners from the same online retail sources (e.g., Lancome-USA.com, Clinique.com and Loccitane.com); and (3) the goods are similar or complementary in terms of purpose or function, namely, beauty serums and facial cleaners and toners are commonly used for cosmetic purposes. 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).

 

Accordingly, since the parties’ goods are identical in part and closely related in part, confusion between applicant’s mark ACTIVEPUR and registrant’s reversed-wording PURACTIVE is likely.

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant argues that finding applicant’s mark ACTIVEPUR as confusingly similar to PURACTIVE violates the anti-dissection rule. However, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

As explained previously, applicant’s mark ACTIVEPUR is merely a reversal of registrant’s mark PURACTIVE. This reversal causes a likelihood of confusion because the marks give a similar commercial impression. Not only do the marks feature the same wording, the difference in word order does not inherently give different commercial impressions. The attached evidence from AHDictionary.com shows that “ACTIVE” can refer to “functioning” or “being in the state of action” and “PURE” can refer to something being “free or dirt, pollutants, infectious agents, or other unwanted elements” or “containing nothing inappropriate or extraneous.” Thus, in the context of the parties’ analytically identical cosmetic and beauty products, the marks ACTIVEPUR and PURACTIVE both can give the commercial impression that the products are “PUR[e]” (both marks spell the word as “PUR”) in terms of not containing inappropriate ingredients and are “ACTIVE” or functioning to help beautify the consumer.

 

Furthermore, given that the parties’ goods are analytically identical, the difference in word order in the marks is insufficient to avoid confusion. Where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

 

Applicant argues that the parties’ goods are sufficiently dissimilar because applicant’s goods are “for consumable skin care products and beauty products” while registrant’s goods “are restricted to use by estheticians and beauty salons only.” However, registrant’s goods are only confined to estheticians and beauty salons in the first entry of the identification of goods with the remainder of the goods being unrestricted. The discussion of the relatedness of the parties’ goods in this case were based on registrant’s non-restricted goods.

 

Even if all of registrant’s goods were limited to “estheticians and beauty salons,” which the examining attorney does not conceded, there is nothing in applicant’s identification of goods restricting them from also being sold or used by estheticians and beauty salons.

 

Accordingly, the Section 2(d) refusal is maintained as final.

 

Response Options

 

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).

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Parker Howard/

Examining Attorney

USPTO

Law Office 117

(571) 272-6548

Parker.Howard@uspto.gov

 

 

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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 20, 2019 for

U.S. Trademark Application Serial No. 88333679

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Parker Howard/

Examining Attorney

USPTO

Law Office 117

(571) 272-6548

Parker.Howard@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 20, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”