Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  January 31, 2020

 

 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.

 

Note: The Likelihood of Confusion is MAINTAINED for Class 1.

 

The Likelihood of Confusion is WITHDRAWN for Class 11.

 

Partial Refusal

THIS PARTIAL REFUSAL APPLIES TO CLASS(ES) 1 ONLY

 

If applicant does not respond to this Office action within the six-month period for response, International Class(es) 1 will be deleted from the application.  The application will then proceed with International Class(es) 11 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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. 3167964.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

Applicant applied to register the mark 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.”

 

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 ]; Perfumed essential oils for use in the manufacture of perfumes, cosmetics, toiletries, and deodorants and deodorizing preparations; perfumes and essential oils for personal use; ethereal essences and oils for use in the manufacture of perfumes, cosmetics, toiletries, deodorants and deodorizing preparations; essential oils for use as flavorings for foodstuffs and beverages ].”

 

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

The compared goods and/or services 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).

In this case, applicant’s “humectants” are similar to the registrant’s “chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of 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 household and industrial detergents” because as the attached Internet stories show, “humectants” are used in the manufacture of cosmetics. In fact an attached Wikipedia definition defines a “humectant” as, “a hygroscopic substance used to keep things moist…. They are used in many products, including food, cosmetics medicines and pesticides.”

Another attached Internet story shows that humectants are also used in deodorant. The story entitled, “Which Chemicals Make Deodorants and Antiperspirants Work?” states, “humectant propylene glycol is used to prevent the product from drying out.” Therefore, as can be seen, humectants would be used along with the other dispersing, stabilizing, bleaching and wetting agents in the manufacture of the registrant’s cosmetics and other goods.

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.

Telephone for Clarification Recommended

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/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

• 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 January 31, 2020 for

U.S. Trademark Application Serial No. 88381587

 

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. 

 

 

Ervin, Inga

/Inga Ervin/

Trademark Examining Attorney

Law Office 111

United States Patent & Trademark Office

571-272-9379

571-273-937

 

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 January 31, 2020, 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.”