To: | Dagamma Ecommerce Solutions Inc. (mithu@dagamma.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88374104 - MAMADERMA - N/A |
Sent: | 6/6/2019 4:46:43 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88374104
MARK: MAMADERMA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Dagamma Ecommerce Solutions Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/6/2019
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.
This application was filed with the USPTO on April 5, 2019.
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is MAMADERMA in standard characters for “Body cream; Body creams; Cosmetic creams; Cosmetic creams for skin care; Moisturizing creams; Non-medicated balms for use on skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Non-medicated skin creams; Non-medicated skin care creams and lotions; Non-medicated skin care preparations, namely, a gel, cream, oil or ointment for improving the appearance of stretch marks or other skin imperfections; Non-medicated skin care preparations; Skin and body topical lotions, creams and oils for cosmetic use” in Class 003 and “Silicone-based personal lubricants; Homeopathic anti-inflammatory ointment; Medical lubricant, namely, vaginal lubricants; Medical preparations for the treatment of skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Medicated balms for treatment of stretch marks, sore nipples,; Medicated creams for treating dermatological conditions; Medicated ointments for treating dermatological conditions; Medicated dermatological preparations and substances; Medicated skin preparation for use in treating skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Medicated skin care preparations; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Medicinal creams for skin care; Personal lubricants; Pharmaceutical preparation for skin care; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Pharmaceutical preparations for skin care; Pharmaceutical preparations for the prevention of dry chapped and cracked skin; Pharmaceutical preparations for treating skin disorders; Pharmaceutical preparations for BURNS, SCRATCHES, MINOR CUTS AND WOUNDS, DRY, CHAPPED AND CRACKED SKIN AND THERAPEUTIC WOUND DRESSINGS CONTAINING LANOLIN; Pharmaceutical products and preparations against dry skin caused by pregnancy; Pharmaceutical products and preparations for hydrating the skin during pregnancy; Pharmaceutical products and preparations for pregnancy blemishes; Pharmaceutical products and preparations for preventing skin blemishes during pregnancy; Pharmaceutical products and preparations to prevent stretch marks” in Class 005. Registrant’s mark is DERMOMAMA for “Cosmetic preparations for skin care; Cosmetic bath salts; Cosmetic preparations; Facial masks; Shampoo-conditioners; Skin lotion; Skin soap”.
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.
Comparison of 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant’s mark is MAMADERMA in standard characters. Registrant’s mark is DERMOMAMA in standard characters.
The difference between the letters “O” and “A” are not enough to obviate the similarities between the marks.
Therefore, the marks create similar commercial impressions.
Comparison of Goods/Services
Applicant’s goods are “Body cream; Body creams; Cosmetic creams; Cosmetic creams for skin care; Moisturizing creams; Non-medicated balms for use on skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Non-medicated skin creams; Non-medicated skin care creams and lotions; Non-medicated skin care preparations, namely, a gel, cream, oil or ointment for improving the appearance of stretch marks or other skin imperfections; Non-medicated skin care preparations; Skin and body topical lotions, creams and oils for cosmetic use” in Class 003 and “Silicone-based personal lubricants; Homeopathic anti-inflammatory ointment; Medical lubricant, namely, vaginal lubricants; Medical preparations for the treatment of skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Medicated balms for treatment of stretch marks, sore nipples,; Medicated creams for treating dermatological conditions; Medicated ointments for treating dermatological conditions; Medicated dermatological preparations and substances; Medicated skin preparation for use in treating skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Medicated skin care preparations; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Medicinal creams for skin care; Personal lubricants; Pharmaceutical preparation for skin care; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Pharmaceutical preparations for skin care; Pharmaceutical preparations for the prevention of dry chapped and cracked skin; Pharmaceutical preparations for treating skin disorders; Pharmaceutical preparations for BURNS, SCRATCHES, MINOR CUTS AND WOUNDS, DRY, CHAPPED AND CRACKED SKIN AND THERAPEUTIC WOUND DRESSINGS CONTAINING LANOLIN; Pharmaceutical products and preparations against dry skin caused by pregnancy; Pharmaceutical products and preparations for hydrating the skin during pregnancy; Pharmaceutical products and preparations for pregnancy blemishes; Pharmaceutical products and preparations for preventing skin blemishes during pregnancy; Pharmaceutical products and preparations to prevent stretch marks” in Class 005.
Registrant’s goods are “Cosmetic preparations for skin care; Cosmetic bath salts; Cosmetic preparations; Facial masks; Shampoo-conditioners; Skin lotion; Skin soap”.
With regards to applicant’s goods in Class 003, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registration uses broad wording to describe “Cosmetic preparations for skin care; Skin lotion”, which presumably encompasses all goods of the type described, including applicant’s more narrow “Body cream; Body creams; Cosmetic creams; Cosmetic creams for skin care; Moisturizing creams; Non-medicated balms for use on skin, namely, a gel, cream, or ointment for improving the appearance of stretch marks or other skin imperfections; Non-medicated skin creams; Non-medicated skin care creams and lotions; Non-medicated skin care preparations, namely, a gel, cream, oil or ointment for improving the appearance of stretch marks or other skin imperfections; Non-medicated skin care preparations; Skin and body topical lotions, creams and oils for cosmetic use”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods are related.
As for applicant’s goods in Class 005, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. Please find attached excerpts from the websites of Mederma, Body Merry, Burt’s Bees, Botanic Tree, and Clarins that show cosmetic skin care products and medicated skin care products for pregnant mothers emanate from the same source.
Therefore, the goods are closely related and consumers will be confused as to the source of the goods.
Applicant should note the following additional ground for refusal.
Mock-up Specimen
An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce). In addition, a photo of the mark on a label, tag, or piece of paper that appears on applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce. See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a). Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce. See TMEP §904.07(a).
In this case, the specimen shows a label that appears to be adhered over a third-party’s tube. This is apparent by the faint colors and designs that show through the adhered label, the edges of the labels that are not properly fastened, and the torn edges of the label on the left side of the tube.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
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
For this application to proceed further, 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. In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c). Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Janet H. Lee/
Trademark Examining Attorney
Law Office 124
Phone: (571) 272-1053
Email: janet.lee@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.