To: | Desiccare, Inc. (pto@lrrc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88381587 - SOOTHE - 169491 |
Sent: | 6/21/2019 1:57:58 PM |
Sent As: | ECOM111@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88381587
MARK: SOOTHE
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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: Desiccare, 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: 6/21/2019
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.
Likelihood of Confusion
Applicant’s mark is SOOTHE for, “DESICCANTS; HUMECTANTS; DESICCANTS FOR REMOVING MOISTURE IN PRODUCTS STORED OR DISTRIBUTED IN AIRTIGHT AND NON-AIRTIGHT PACKAGING AND CONTAINERS, AND FOR USE IN SMALL AND LARGE ROOMS OR ENCLOSED SPACES; DESICCANTS FOR USE WITH SMOKABLE PRODUCTS; HUMECTANTS FOR CONTROLLING AND STABILIZING THE DEW POINT AND HUMIDITY FOR PRODUCTS STORED OR DISTRIBUTED IN AIRTIGHT AND NON-AIRTIGHT PACKAGING AND CONTAINERS, AND FOR USE IN SMALL AND LARGE ROOMS OR ENCLOSED SPACES; HUMECTANTS FOR USE WITH SMOKABLE PRODUCTS; CHEMICALS FOR REMOVING OXYGEN, ODORS AND GASES FROM PRODUCTS STORED AND DISTRIBUTED IN AIRTIGHT AND NON-AIRTIGHT PACKAGING AND CONTAINERS, AND FOR USE IN SMALL AND LARGE ROOMS OR ENCLOSED SPACES; CHEMICALS FOR ABSORBING OXYGEN AND ODOR FOR USE WITH SMOKABLE PRODUCTS; CHEMICAL HUMIDITY INDICATOR CARDS; HUMIDITY CONTROL DEVICE, NAMELY, A PORTABLE AND SEALED DEVICE CONTAINING A MOISTURE-SENSITIVE SILICA CO-POLYMER THAT ABSORBS OR RELEASES MOISTURE TO MAINTAIN RELATIVE HUMIDITY IN A PARTICULAR RANGE WITHIN A CLOSED ENVIRONMENT; OZONE GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE OF NON-INDUSTRIAL PRODUCTS; OZONE GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE IN SMOKABLE, EDIBLE, AND CONSUMABLE PRODUCTS; OZONE GENERATORS FOR CONTROLLING THE LEVELS OF ODOR, BACTERIA, AND PESTS IN SMALL AND LARGE ROOMS AND ENCLOSED SPACES.”
The registered mark is SOOTHEX for, “Chemicals for use in the manufacture of foods, foodstuffs and food ingredients; chemicals for use in the manufacture of flavors for use in foods, beverages and pharmaceuticals, none being essential oils; chemicals for use in the manufacture of food preservatives; chemical preparations all being artificial sweeteners for use in the manufacture of foods, beverages and pharmaceuticals; chemicals being emulsifiers for use in the manufacture of foods and beverages; enzymes for use in the manufacture of foods; gelatin for use in the manufacture of foods and beverages; chemical proteins and cultures for use in the manufacture of foods and beverages; chemicals for use in the fermenting of alcoholic and non-alcoholic beverages; preservative oils for use in the manufacture of foodstuffs; saccharin, ] chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of [ foods, ] toiletries and cosmetics, chemicals for use in the manufacture of deodorants and deodorizing agents; chemicals for use in the manufacture and formulation of fragrances and perfumes; chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of [ perfumes, toiletries, cosmetics, ] household and industrial detergents [ ; detergents for use in the manufacture of cosmetics, toiletries, perfumes and in the manufacture of detergents for industrial cleaning purposes and detergents for household cleaning purposes ].”
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 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 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).
In this case, applicant’s mark SOOTHE is similar to the registered mark SOOTHEX because applicant’s mark is simply the registered mark with the X removed from the end of applicant’s mark. As such, the marks look alike and sound alike when spoken.
COMPARISON OF THE GOODS
In this case, applicant’s goods and the registrant’s goods are similar because as the attached Internet stories show, applicant’s “chemicals for removing oxygen and odors and gases from products”-class 1 and “ozone generators for…extending shelf life of non-industrial products”-class 11, and the registrant’s “preservative oils for use in the manufacture of foodstuffs” are all used as food preservation methods. Accordingly, consumers encountering the goods of the parties would mistakenly believe the goods originate from a common source.
Registration is therefore refused under Section 2d.
Identification of Goods
HUMIDITY CONTROL DEVICE, NAMELY, A PORTABLE AND SEALED DEVICE CONTAINING A MOISTURE-SENSITIVE SILICA CO-POLYMER THAT ABSORBS OR RELEASES MOISTURE TO MAINTAIN RELATIVE HUMIDITY IN A PARTICULAR RANGE WITHIN A CLOSED ENVIRONMENT; OZONE GENERATORS THAT KILL MOLD AND MILDEW, NAMELY GENERATORS, FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE OF NON-INDUSTRIAL PRODUCTS; OZONE GENERATORS THAT KILL MOLD AND MILDEW, NAMELY, GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE IN SMOKABLE, EDIBLE, AND CONSUMABLE PRODUCTS; OZONE GENERATORS THAT KILL MOLD AND MILDEW, NAMELY, GENERATORS FOR CONTROLLING THE LEVELS OF ODOR, BACTERIA, AND PESTS IN SMALL AND LARGE ROOMS AND ENCLOSED SPACES, in class 11.
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.
Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services. See Nice Classification, 11th ed., version 2019 (Nice 11-2019). Applications filed on or after January 1, 2019 must comply with this new version. See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version. See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09. If applicant chooses to comply with the new version, the entire identification must comply with this version. See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries. See TMEP §1402.04.
Note: The goods in class 1 are acceptable as written.
Telephone for Clarification Recommended
/Inga Ervin/
Inga Ervin
Trademark Examining Attorney
Law Office 111
571-272-9379
571-273-9379(fax)
Inga.Ervin@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.