United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88342239
Mark: ARJA
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Correspondence Address: SCOOLIDGE, PETERS, RUSSOTTI & FOX LLP
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Applicant: Patel, Sejal
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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: May 07, 2020
This Office action is in response to applicant’s communication filed on April 13, 2020.
Likelihood of Confusion
Applicant applied to register the mark ARJA for the amended goods, “Plant-based, vegan cosmetics for adults and children; Plant-based, vegan non-medicated skin care preparations for adults and children; Plant-based, vegan beauty soap for adults and children; On-line wholesale and retail store services featuring non-medicated skin care preparations, beauty soap, and cosmetics”
The registered mark is ARGA MAKE MOMENTS COUNT for, “Toiletries, namely, cologne, toothpaste, body lotion; Non-medicated body cleaning and beauty care preparations, namely, cosmetics, skin care preparations, skin lotions, skin soaps, soaps for body care; Perfumed body, skin, face, hair and hand lotions; Perfumery and fragrances; Shower and bath foam; Hair preparations and treatments, namely, hair care preparations, hair moisturizers, hair oils and hair straightening preparations; Soaps and gels, namely, bath soap, beauty soap, cosmetic soaps, non-medicated hand soaps, non-medicated facial soaps, bath and shower gels, body gel, eyebrow gel and nail gel; Bathtubs; Hot tubs; Hydrotherapy baths; Spa baths being vessels; Whirlpool-jet installations; Fittings for massage baths, namely, faucets; all the aforementioned excluding electrical herbal vaporizers for household use and replacement parts therefor, electric and battery-operated aromatherapy diffusers for personal use and replacement parts therefor, electric portable vaporizers for personal household use, all being not for medical use; Promoting the sale of bath tubs, hydromassage pools, hydrotherapy baths and spa baths through promotional contests and the distribution of related printed material for others.”
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.
COMPARISON OF THE MARKS
In this case, applicant’s mark ARJA is similar to the registered mark ARGA MAKE MOMENTS COUNT because of the common use of the phonetically equivalent words (meaning the words sound alike when spoken) ARJA and ARGA in both of the marks. As such, the marks sound alike when spoken.
Applicant has argued that the marks “are phonetically different. The first word of the registered mark ARGA, has a ‘G’ followed by an ‘A,’ which pursuant to English phonics rules, is pronounced with a hard ‘G’ sound like gas.” Applicant continues, the mark “ARJA, is pronounced entirely different with a soft ’J’ sound like ‘jam.’ Applicant’s argument is not persuasive because case law states, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such 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). As such, there is no correct way to pronounce applicant’s ARJA or the registrant’s ARGA. Therefore, the marks most certainly could be pronounced alike.
COMPARISON OF THE GOODS
In this case, applicant’s “plant-based vegan cosmetics for adults and children and vegan non-medicated skin care preparations for adults and children and plant-based, vegan beauty soap for adults and children” are related to the registrant’s “cosmetics, non-medicated skin care preparations and skin care preparations, and beauty soap and skin soaps and soaps for body care, because the registrant’s different products are a broad category of products that would include applicant’s more specific goods. For example, as the attached Internet stories show, the registrant’s “cosmetics non-medicated skin care preparations” is a broad category of goods that would include applicant’s “plant-based, vegan cosmetics and skin care preparations.” Additionally, the attached evidence also shows in regards to class 35, stores sell both “plant-based, vegan cosmetics and skin care products” as well as “cosmetics and non-medicated skin care preparations.” Accordingly, consumers encountering the goods of the parties would mistakenly believe the goods originate from a common source.
Registration is therefore refused and made FINAL under Section 2d.
Telephone for Clarification Recommended
.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.
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).
/Inga Ervin/
Trademark Examining Attorney
Law Office 111
United States Patent & Trademark Office
571-272-9379
571-273-9379(fax)
Inga.Ervin@uspto.gov
RESPONSE GUIDANCE