United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88389917
Mark: RAVE
|
|
|
Correspondence Address: KNOBBE, MARTENS, OLSON & BEAR, LLP
|
|
|
Applicant: Island Breeze Systems CA, LLC
|
|
|
Reference/Docket No. IBS.028T
Correspondence Email Address: |
|
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: January 08, 2020
This Office action is in response to applicant’s communication filed on December 30, 2019.
In a previous Office action dated July 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks. In addition, applicant was required to satisfy the following requirement: amend the identification of goods. Applicant was further advised of prior pending applications in U.S. Application Serial Nos. 86895819 and 87767142 that might present a bar to registration under Trademark Act Section 2(d), if registered.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: amend the identification of goods. See TMEP §§713.02, 714.04.
The following refusal has also been obviated: Trademark Act Section 2(d) for a likelihood of confusion with respect to Reg. Nos. 4258257 and 5261669. See TMEP §§713.02, 714.04.
In addition, the following refusal has been withdrawn: Trademark Act Section 2(d) for a likelihood of confusion with respect to Reg. No 4164377 as well as the potential Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Application Serial Nos. 86895819 and 87767142. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Partial Section 2(d) Refusal – Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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 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. 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.
Applicant has applied for the mark RAVE (standard characters) for
“Cosmetics only for personal care, excluding all hair care products; non-medicated skin care preparations, namely sprays, lotions and patches” in International Class 003.
“Medicated skin care preparations, namely, sprays, lotions, and patches; sublingual strips in the nature of medicated lozenges” in International Class 005
The cited registrations are as follows:
RAVE (typed drawing) (Reg. No. 1678229) for “hair styling preparations; namely, sculpting spritz, protective curl revitalizer, protective styling mousse, hair gel and hair spray” in International Class 003;
RAVE EXTREME ENERGY NOOTROPIC (standard characters) (Reg. No. 5476161) for “dietary and nutritional supplements for enhancing athletic performance, endurance, strength and muscle building containing nootropics” in International Class 005;
RAVE (plus design) (Reg. No. 5783670) for “make-up brushes” in International Class 021.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In the present case, applicant’s mark is RAVE and Reg. No. 1678229 is RAVE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id. Therefore, the marks are confusingly similar.
Further, applicant’s mark RAVE is highly similar to Reg. No. 5783670 where the literal element of registrant’s mark is identical to applicant’s applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Additionally, the design element comprising three hash marks tilted twenty degrees to the right in Reg. No. 5783670 does not obviate the similarity between the marks where such elements comprise basic geometric shapes. Moreover, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Lastly, applicant’s mark RAVE is highly similar to Reg. No. 5476161 where the marks share the term “RAVE”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The additional terms in Reg. No. 5476161 do not obviate the similarity between the marks where the terms “EXTREME ENERGY NOOTROPIC” are highly suggestive and/or descriptive of registrant’s goods. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. Thus, the term “RAVE” comprises the dominant element in registrant’s mark.
Additionally, the shared wording “RAVE”, which comprises the entirety of applicant’s applied-for mark, also comprises the first element in registrant’s mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
In consideration of the foregoing, the marks are identical or identical in part, look and sound similar and create the same commercial impression.
In applicant’s December 30, 2019 response, applicant argues the term “RAVE” is weak. The examining attorney respectfully disagrees as applicant has merely asserted this claim and has presented no evidence or arguments in support of this position. Even where the term “RAVE” is a commonly used term, applicant’s applied-for mark is identical or highly similar to registrants’ marks as noted above. In addition, the goods of the parties are highly similar as noted below in the comparison of the goods. Where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). As the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great, applicant’s identical and identical in part applied-for mark is considered similar for likelihood of confusion purposes.
Comparison of the Goods
Comparison with Reg. No. 5476161
In this case, the application uses broad wording to describe “sublingual strips in the nature of medicated lozenges”, which presumably encompasses all goods of the type described, including Reg. No’s. 5476161 more narrow “dietary and nutritional supplements for enhancing athletic performance, endurance, strength and muscle building containing nootropics”. 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). Specifically, dietary and nutritional supplements are commonly provided in the form of a lozenge. See attached Internet evidence from psychologytoday.com, amazon.com, and seekinghealth.com. 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 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.
Comparison with Reg. Nos. 1678229 and 5783670
In the present case, applicant’s goods are closely related to registrants’ goods. Specifically:
In response, applicant argues its broad goods, as amended, no longer overlap that of the registrants’. The examining attorney respectfully disagrees with applicant’s argument. As noted above, determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue.
With respect to Reg. No’s. 5476161, the aforementioned evidence establishes that applicant’s and registrant’s goods are legally identical. Applicant’s amendment to the identification of goods is insufficient to overcome a likelihood of confusion analysis with respect to Reg. No’s. 5476161 as the registration has no limitation as to the means of delivery of its nutritional supplements and applicant further has no limitation as to the nature of its medicated lozenges. Therefore, where entities provide nutritional supplements in the form of a medicated lozenge as established by the aforementioned evidence, registrant is free to do the same in the absence of any limitation. Therefore, applicant’s amendment to the identification of goods is insufficient to overcome a likelihood of confusion with respect to Reg. no. 5476161.
With respect to Reg. Nos. 1678229 and 5783670, the aforementioned evidence establishes that applicant’s and registrants’ goods are closely related such that same entity commonly manufactures, produces, and/or provides the relevant goods as stated in the application and registrations and markets the goods as stated in the application and registrations under the same mark and that the relevant goods as stated in the application and registrations are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.
Applicant’s amendment to the identification of goods to exclude hair care products is insufficient to overcome a likelihood of confusion analysis with respect to Reg. No. 1678229 as these goods commonly travel in the same trade channel and entities that provide hair care products like Reg. No. 1678229, commonly provide cosmetics for personal care as established by the aforementioned evidence from lorealparisusa.com, garnierusa.com, suave.com, ulta.com, and sallybeauty.com. Applicant’s exclusion of these goods does not affect registrant’s right to provide otherwise related goods under the same mark.
Similarly, applicant’s amendment to the identification of goods to limit its cosmetics to personal care is also insufficient to overcome a likelihood of confusion analysis with respect to Reg. No. 5783670 as entities that make-up brushes like Reg. No. 5783670, commonly provide cosmetics for personal care as established by the aforementioned evidence from avon.com, revlon.com, bhcosmetics.com, sephora.com, and sigmabeauty.com.
Conclusion
In conclusion, the parties utilize highly identical or identical in part marks conveying a highly similar overall sound and commercial impression in connection with related goods marketed to the same consumers through similar channels of trade. Therefore, registration of the applied-for mark is refused as to “cosmetics only for personal care, excluding all hair care products; non-medicated skin care preparations, namely sprays, lotions and patches” in International Class 003 and “medicated skin care preparations, namely, sprays, lotions, and patches [and] sublingual strips in the nature of medicated lozenges” in International Class 005.
Response Options to FINAL Section 2(d) Refusal
The stated refusal refers to the following goods and does not bar registration for the other goods:
“Cosmetics only for personal care, excluding all hair care products; non-medicated skin care preparations, namely sprays, lotions and patches” in International Class 003.
“Medicated skin care preparations, namely, sprays, lotions, and patches; sublingual strips in the nature of medicated lozenges” in International Class 005
(1) Deleting the goods to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Partial Abandonment Advisory
“Cosmetics only for personal care, excluding all hair care products; non-medicated skin care preparations, namely sprays, lotions and patches” in International Class 003.
“Medicated skin care preparations, namely, sprays, lotions, and patches; sublingual strips in the nature of medicated lozenges” in International Class 005
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
In such case, the application will proceed for the following goods only:
“Capsules sold empty for pharmaceuticals” in International Class 005
“Vape cartridges, namely, electronic cigarette refill cartridges sold empty” in International Class 034
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. 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 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).
Christopher Hoffman
/Christopher Hoffman/
Trademark Examining Attorney
Law Office 128
(571)272-3351
christopher.hoffman@uspto.gov
RESPONSE GUIDANCE
