UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 5/24/2019

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods – Required

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. 5646254.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

Here, the applicant’s mark is BANGKO (in standard characters) for “Air fragrance and potpourri; soaps, creams, lotions, sunscreen, bath salts; breath freshening sprays; breath freshening strips; intimate hygiene cleansers; cosmetics, makeup, makeup remover, cosmetic tools, lipstick cases and false eyelashes; antiperspirants and deodorants; hair care products, namely, shampoo, dry shampoo, hair spray, conditioner, hair lotions, hair dyes/hair color, pomades; cologne, aftershave, and perfume; essential oils; false nails, nail polish, nail polish remover and nail art stickers” in International Class 3.

Registrant’s mark is BANK (in standard characters) for goods including “Perfumery; Essential oils for personal use; Cosmetics; Make-up; Eye make-up; Eyeliners; Blushers; Lipsticks; Hair lotions; Non-medicated soaps for hands, face and body” in International Class 3.

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.

Similarity of the Marks

The respective marks, BANGKO and BANK, are highly similar appearance and sound, and are identical in meaning because applicant’s mark is translates into “Bank” in English.

Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

Applicant’s mark is in Filipino, which is the standardized form of Tagalog spoken in the Philippines (see attached screenshot from Wikipedia), which is a common, modern language in the United States.  Specifically, the evidence from the U.S. Census table of languages spoken at home in the United States shows the large number of U.S. consumers who speak this language, 1,613,346 located in the United States. Additionally, as seen by the additional screenshot from Wikipedia, Tagalog (including Filipino) is the fourth most spoken language in the United States.

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

In this case, the ordinary American purchaser would likely stop and translate the mark because, as shown above, the Filipino language is a common, modern language spoken by an appreciable number of consumers in the United States.

Therefore, because the applicant’s mark is directly translated to “BANK” in English, as provided by the applicant themselves), the mark is considered legally identical to the registrant’s mark, thus, the marks are confusingly similar.

Similarity of the Goods

The applicant’s various cosmetics and personal hygiene products is closely related to the registrant’s cosmetics and personal hygiene products because the goods are partially identical and both are the types of goods and services offered by the same entities under the same marks.

The compared 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 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 attached Internet evidence, consisting of several screenshots from cosmetic and hygiene companies, e.g. Axe, Revlon, Aveeno, and Clinique, establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark; the relevant goods are sold or provided through the same trade channels and used by 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).

Thus, upon encountering BANGKO, which translates to BANK, used on various cosmetics and personal hygiene products, and BANK used on also used on cosmetics and personal hygiene products, consumers are likely to be confused and mistakenly believe that the applicant’s goods emanate from the same source as the registrant’s goods.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

IDENTIFICATION OF GOODS – REQUIRED

There are multiple issues with the identification of goods, however, only a few of the larger issues are specifically described below. Please note that the suggested language further below provides guidance with each issue of the identification.

The wording “soaps, creams, lotions, sunscreen, and bath salts” in the identification of goods is indefinite and must be clarified because these products could be in Class 3 if they are non-medicated, or Class 5 if they are medicated, and these items must also state the type(s) of soaps or creams or lotions.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

Additionally, the wording “cosmetic tools” in the broader wording “cosmetics, makeup, makeup remover, cosmetic tools, lipstick cases and false eyelashes” in the identification of goods is indefinite and must be clarified because applicant must state the exact type(s) of tools, and these goods fall in Class 21.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

Applicant may substitute the following wording, if accurate (additions appear in bold underline font):

CLASS 3 – Air fragrance preparations and potpourri; soaps, namely,   {specify type(s) in Class 3, e.g., bar soap, bath soap, non-medicated hand soaps, etc.}; creams, namely,   {specify type(s) in Class 3, e.g., facial cream, cosmetic creams, beauty creams, etc.}; Lotions, namely,   {specify type(s) in Class 3, e.g., lotions for cosmetic purposes, body lotion, facial lotion, shaving lotions, etc.}; Sunscreen preparations; bath salts, not for medical purposes; breath freshening sprays; breath freshening strips; Non-medicated intimate personal hygiene cleansers; cosmetics, makeup, makeup remover, lipstick cases and false eyelashes; antiperspirants and deodorants; hair care products, namely, shampoo, dry shampoo, hair spray, hair conditioner, hair lotions, hair dyes and hair color, hair pomades; cologne, aftershave, and perfume; essential oils; false nails, nail polish, nail polish remover and nail art stickers

CLASS 5 – soaps, namely,   {specify type(s) in Class 5, e.g., anti-bacterial soap, medicated soap, etc.}; creams, namely,   {specify type(s) in Class 5, e.g., medicinal creams for skin care, anti-itch cream, topical analgesic creams, etc.}; Lotions, namely,   {specify type(s) in Class 5, e.g., antibacterial hand lotions, medicated sunburn lotions, medicated hair lotions, etc.}; Medicated sunscreen; bath salts for medical purposes

CLASS 8 – Cosmetic tools, namely,   {specify type(s) of tools, e.g., eyelash curlers, tweezers}

CLASS 21 – Cosmetic tools, namely,   {specify type(s) of tools, e.g., make-up brushes, applicator sticks for applying make-up, facial sponges for applying make-up,

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only one (1) class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

RESPONSE GUIDELINES 

Response guidelines.  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.

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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.  

/Kyle Aurand/

Kyle Aurand

Examining Attorney

Law Office 126

(571) 270-3039

kyle.aurand@uspto.gov

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/24/2019 FOR U.S. APPLICATION SERIAL NO. 88344468

Please follow the instructions below:

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/24/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

WARNING

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.