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: July 03, 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.  

 

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.

 

SUMMARY OF ISSUES:

 

• Refusal and potential refusal – Sec. 2(d) Likelihood of confusion with prior marks
• Clarified identification of goods/services required
• Advisory regarding dual filing bases

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4158944, 5467215, 5025802, 4658561 and 4291528.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The registered marks are:

 

1. Reg. No. 4158944 for BE ENCHANTED covering “Personal care products, namely, antibacterial skin soaps, bath gels, bath lotion, bath soaps in liquid, solid or gel form, body cream soap, body creams, body lotions, body scrub, body spray used as a personal deodorant and as fragrance, body sprays, namely, water in atomized containers used to produce a cooling effect, body washes for humans, bubble bath, cologne, cream soaps, eau de parfum, eau de toilette, face and body creams, face and body lotions, hand cleaning preparations, hand creams, hand lotions, hand soaps, liquid bath soaps, liquid soap, liquid soaps for hands, face and body, lotions for face and body care, lotions for face and body, perfume, perfumed soaps, shower and bath foam, shower and bath gel, shower creams, shower gels, skin creams, skin creams in liquid and solid form, soaps for body care, soaps for personal use.”

 

2. Reg. No. 5467215 for ENCHANTED PANSY PETALS covering “Aromatic oils; Aromatic potpourris; Essential oils for use in the manufacture of scented products; Potpourri; Scented oils; Scented oils used to produce aromas when heated; Scented room sprays; Reed diffusers comprised of scented oils and also including reeds and a diffuser container; Reeds and scented oils sold as a unit for use in room scent diffusers.”

 

3. Reg. No. 5025802 for ENCHANTED ESSENCES covering “Cosmetics and skincare products, namely, perfumes and essential oils for personal use, massage oils, soaps, face and body creams, face and body lotions, non-medicated foot cream, hand cream, shampoo, hair conditioner, face and body scrubs, facial masks and cleansers, deodorant, lip balm, bubble bath, non-medicated bath salts, shower gel, body mist, sprays composed of essential oils, hydrosols and water and packaged in pump spray bottles”.

 

4. Reg. No. 4658561 for ENCHANTED POLISH and design covering “Cosmetics; Fingernail decals; Make-up; Nail polish; Nail varnish”.

 

5. Reg. No. 4291528 for ENCHANTED POLISH covering “nail polish”.

 

The applicant's mark ENCHANTED is similar to the cited mark visually and phonetically given the shared presences of the word “ENCHANTED”.  The presences of other wording the cited marks, while sufficient to distinguish them from each other, does not preclude refusal of the proposed mark, which has no additional distinguishing wording.  Although applicant’s mark does not contain the entirety of the registered marks, 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.

 

Moreover, if the goods and/or services of the respective parties 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 would be required with diverse goods and/or services.  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).

 

Here, the applicant's identification of numerous personal care, cosmetic, fragrance, skin care and nail care products encompasses goods which are the same or highly similar to registrants’ descriptions of similar goods.  As such, the goods of the parties are likely to move in the same channels of trade to the same classes of purchasers.  For example, both the applicant's nail polish and other nail care preparations and those described in Reg. Nos. 4658561 and 4291528 would likely be marketed in drug stores, department stores, beauty supply shops and the like and could be used in conjunction with each other.   Consumers encountering the identical or similar goods under the marks ENCHANTED  and ENCHANTED POLISH are likely to conclude, in error, that the goods are related.  Similar such comparisons may be made with respect to the other cited registrations, each of which identifies goods encompassed by applicant’s identification.  Given the similarities of the marks and the goods, consumers are likely to conclude that the goods are somehow related or emanate from the same source.  Accordingly, because confusion is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

Applicant also must note the following prior pending applications:

 

PRIOR-FILED APPLICATION(S)

 

The filing dates of pending U.S. Application Serial Nos. 87949294, 88195452, 88103327, 88199161, 88162828 and 87920325 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

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

 

IDENTIFICATION OF GOODS

 

The identification of goods/services includes wording which is indefinite and must be clarified to ensure proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods/services as indicated below.  See TMEP §1402.01.  If the goods/services have no common commercial or generic name, applicant must describe the product/service, its main purpose, and its intended uses.  See id. 

 

The identification of goods and/or services also contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Given the length of the identification and extent of amendment required, necessary changes and requirements for additional information are integrated directly into the proposed amended identification set forth below.  As indicated, the proposed language includes certain deletions of duplicate language and wording describing goods in other classes.  For instance, reference to “preparations and products for removing make-up” is clarified as “make-up removing preparations” because “products” could encompass goods in other classes, e.g., “makeup removing cloths”, in Class 24, or “electric make-up removing appliances”, in Class 21.  If applicant wishes to retain goods/services beyond the scope of the specified classes within the identification, it must ensure such goods/services are properly classified. 

 

Applicant may adopt the following wording, if accurate: 

 

“Cosmetics, make up; cosmetic skin care preparations, solid powder for compacts; lipsticks; lip gloss; make-up powder and foundation; skin moisturisers; beauty care cosmetics; cosmetic preparations for body care; essential oils for personal use; make-up removing preparations; lotions, creams and skin conditioners for the face, hands and body; beauty masks; abrasive cloth; abrasive paper; skin abrasive preparations; adhesives for affixing false hair; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil for cosmetic purposes; almond soap; aloe vera preparations for cosmetic purposes; alum stones being astringents for cosmetic purposes; amber being perfume; antiperspirant soap; antiperspirants; aromatic oils; astringents for cosmetic purposes; Non-medicated balms for use on (indicate nature of balms, e.g., hair, skin, lips); bath salts, not for medical purposes; cosmetic preparations for baths; beard dyes; beauty masks; bergamot oil; bleaching preparations for cosmetic purposes; breath freshening sprays; breath freshening strips; cakes of toilet soap; essential oils of cedarwood; essential oils of citron; cleansing milk for toilet purposes; hair colorants for toilet purposes; color-removing preparations for hair; colour-brightening chemicals for household purposes; cosmetic kits comprised of make-up; cosmetic preparations for slimming purposes; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; cosmetic creams; skin whitening creams; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes; dry shampoos; cosmetic dyes for hair and beards; eau de cologne; emery cloth and paper; ethereal essences; essential oils; ethereal oils; extracts of flowers being perfume; eyebrow cosmetics; eyebrow pencils; adhesives for affixing false eyelashes; cosmetic preparations for eyelashes; false eyelashes; adhesives for affixing false hair; false nails; extracts of flowers being perfumes; soap for foot perspiration; dental bleaching gels; greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone being perfume; jasmine oil for personal use; javelle toilet water; petroleum jelly for cosmetic purposes; joss sticks; lavender oil; lavender water; essential oils of lemon; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions; make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; cleansing milk for toilet purposes; mint essence being essential oil; mint for perfumery; musk being perfumery; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; false nails; neutralizers for permanent hair waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet cosmetic purposes; cosmetic pencils; perfumery; perfumes; denture polishes; pomades for cosmetic purposes; make-up powder; pumice stone for personal use; rose oil for cosmetic purposes; shampoos; shaving preparations; shaving soap; cosmetic preparations for skin care; skin whitening creams; skin soap; sunscreen preparations; sun-tanning preparations; talcum powder, for toilet use; terpenes being essential oils; toilet water; non-medicated toiletry preparations; decorative transfers for cosmetic purposes; varnish-removing preparations; waving preparations for the hair; depilatory wax; haircare preparations,” in Class 3.

 

“Make up artist services; make-up application services; cosmetic make-up application services; beauty care services; beauty salon and beauty care services; beauty therapy services and treatments being beauty care services; beauty treatment being beauty care services; healthcare, weight reduction diet planning, weight loss program services and lifestyle wellness advisory services; cosmetic treatment for the hair being hair styling; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services,” in Class 44.

 

Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening their scope is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Advisory: Combined Application

 

The application identifies goods and/or services in potentially more than two international classes; therefore, if the identification is amended to formally specify more than two classes, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services 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 and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es).  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

ADVISORY – APPLICATION UNDER SEC. 44

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 03, 2019 for

U.S. Trademark Application Serial No. 88394001

 

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. 

 

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

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 July 03, 2019, 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.”