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:  July 17, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES

 

(1)  Section 2(d) Likelihood of Confusion Refusal

(2)  Prior Pending Application

(3) Acceptable Written Consent Required

 

SECTION 2(D) LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5694825, 5593994, 5593632, 5104354, 5219431, 5257054, 5246722, 5009646, 5018352, 4929216, 4603318, 4567076, 5041395, 4412170, 3446761, and 2532004.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant has applied to register the standard character mark KENDALL for use in connection with “Fragrances; eau de parfum; eau de toilette; perfumes; hair care preparations; hair styling preparations; bath and shower gels; bubble bath; body powders; body lotions; body creams; face lotions; body milks; skin toners; skin cleansers; beauty masks; body scrubs; facial scrubs; body oils; deodorant for personal use; lip balm; lip gloss; cosmetics; cosmetic preparations; nail polish; nail polish remover; and nail care preparations” in International Class 3.

 

Registration Nos. 5593994, 5219431, and 5041395 are all held by a single entity: New Shining Image, LLC

 

Registrant in Registration No. 5593994 has registered the standard character mark KENDAL for use in connection with “Microdermabrasion apparatus; Electric foot spa massagers” in International Class 10.

 

Registrant in Registration No. 5219431 has registered the standard character mark KENDAL for use in connection with, in relevant part, “Furniture; massage beds being massage tables in the nature of bed furniture used in massage services; massage chairs in the nature of chair furniture used in massage services, and massage tables; cushions; mattresses; pillows; neck support pillows; neck support roll cushions; reclining chairs; chairs; sofas” in International Class 20.

 

Registrant in Registration No. 5041395 has registered the standard character mark KENDAL for use in connection with “Jewelry boxes; Jewelry cases; Jewelry organizer cases; Leather jewelry and accessory boxes; Watch boxes; Watch winders; Cases for watches and clocks; Clocks; Jewelry armoires; Wooden jewellery boxes” in International Class 14.

 

Registration Nos. 5009646 and 5246722 are both held by a single entity: World Tour Enterprises, Ltd.

 

Registrant in Registration No. 5009646 has registered the standard character mark KENDALL & JAMES for use in connection with “Jewelry; Watches” in International Class 14 and “All purpose sport bags; All-purpose athletic bags; All-purpose carrying bags; Backpacks; Billfolds; Handbags; Tote bags; Wallets” in International Class 18.

 

Registrant in Registration No. 5246722 has registered the standard character mark KENDALL & JAMES for use in connection with “Bathing suits; Blouses; Caps; Coats; Dresses; Gloves; Hats; Jackets; Loungewear; Pajamas; Pants; Raincoats; Rainwear; Robes; Scarves; Shirts; Shorts; Skirts; Suits; Sweaters; Sweatpants; Sweatshirts; Swimsuits; Swimwear; Tops; Trousers” in International Class 25.

 

Registration Nos. 4929216, 4567076, and 4412170 are all held by a single entity: Kendall Conrad Design

 

Registrant in Registration No. 4929216 has registered the standard character mark KENDALL CONRAD for use in connection with “footwear, namely, sandals, loafers, flip flops” in International Class 25.

 

Registrant in Registration No. 4567076 has registered the standard character mark KENDALL CONRAD for use in connection with “Jewelry, namely rings, stack rings of precious metals, cuff rings of precious metals, earrings, hoops, ear cuffs, bangles, bracelets, necklaces, charms, charms for collar jewelry and bracelets, pendants, medallions, key rings of precious metals” in International Class 14.

 

Registrant in Registration No. 4412170 has registered the standard character mark KENDALL CONRAD for use in connection with “Handbags; leather bags and wallets; leather bags, suitcases and wallets; leather cases; leather handbags; leather purses; purses” in International Class 18.

 

Registrant in Registration No. 5694825 has registered the special form mark KENDALL MAC (with stylized wording) for use in connection with “Clothing, namely, t-shirts, hats, pants, sweatshirts, tops, bottoms and hoodies” in International Class 25.

 

Registrant in Registration No. 5104354 has registered the standard character mark KENDAL & HYDE for use in connection with “Backpacks, book bags, sports bags, bum bags, wallets and handbags” in International Class 18.

 

Registrant in Registration No. 5593632 has registered the special form mark KENDALL STREET COMPANY (with design) for use in connection with “T-shirts” in International Class 25.

 

Registrant in Registration No. 5257054 has registered the standard character mark KENDALL MILES for use in connection with, in relevant part, “Footwear; shoes” in International Class 25 and “Online retail store services featuring fashion goods, namely, footwear” in International Class 35.

 

Registrant in Registration No. 5018352 has registered the special form mark L. KENDALL (with design) for use in connection with “Precious metals and their alloys; goods made of precious metals or coated therewith, not included in other classes, namely, necklaces, ornamental pins, bracelets, rings, earrings, charms; jewelry chains, brooches, jewelry ornaments, ornamental pins, hat ornaments of precious metal; jewellery, not including key chains; jewellery cases in precious metals, precious stones; semi-precious stones, pearls, costume jewellery, cuff links, horological and chronometric instruments, stopwatches, watches, wristwatches, watch bands, straps for wristwatches, watch straps, watch chains, watch cases, watch glasses, watch glasses, watch springs, cases for watches, pocket watches, not including clocks” in International Class 14.

 

Registrant in Registration No. 4603318 has registered the standard character mark KENDALL-JACKSON for use in connection with “Bar soap; Skin soap” in International Class 3.

 

Registrant in Registration No. 3446761 has registered the standard character mark KENDAL BOOTGLOW for use in connection with, in relevant part, “Clothing, namely, sweatshirts, T-shirts, shirts, turtlenecks, pants, shorts, leggings, socks, tights, sport caps, cloth bibs, bathing suits, Halloween costumes and masquerade costumes, cover-ups, boots, shoes, underwear, nightshirts, pajamas, nightgowns, gloves and scarves, sandals, bath robes, dresses, sweatpants, skirts, jackets, vests and hats, and bicycling gloves” in International Class 25.

 

Registrant in Registration No. 2532004 has registered the typed drawing mark KENDALL HARTCRAFT for use in connection with “Ready-made picture frames, picture frame moldings” in International Class 20.

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.

 

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.

 

Similarity of the Marks

 

Similarity of the applied-for mark to the marks in Registration Nos. 5219431, 5593994, and 5041395

 

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).

 

Here, applicant’s standard character mark, KENDALL, is confusingly similar to the registered standard character marks KENDAL. Specifically, these marks consist entirely of the letters “KENDAL” in identical sequence. 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). Here, because these marks consist entirely of the letters “KENDAL” in identical sequence, they are similar in terms of appearance and are phonetic equivalents.

 

Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Additionally, because the marks are all standard character marks, applicant could use its mark in a stylization and font similar or even identical to that of the registrant, which would increase the likelihood of confusion. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). 

 

Although the applied-for mark contains an additional letter “L” at the end of the mark, that fact does not obviate this refusal. The marks are phonetic equivalents, and slight differences in appearance will not overcome a likelihood of confusion where, as here, they do not alter the overall commercial impression of the mark.

 

Ultimately, when purchasers call for the goods of the applicant and the goods of the registrant using marks that are very similar in sound, appearance and meaning, they are likely to believe that the marks identify a single source of goods. Thus, the marks are confusingly similar.

 

Similarity of the applied-for mark to the marks in Registration Nos. 5009646, 5246722, 4929216, 4567076, 4412170, 5694825, 5593632, 5257054, 5018352, 4603318 and 2532004

 

Here, applicant’s standard character mark, KENDALL, is confusingly similar to the registered standard character marks KENDALL & JAMES, KENDALL CONRAD, KENDALL MILES, and KENDALL-JACKSON, to the registered typed drawing mark KENDALL HARTCRAFT, and to the registered special form marks KENDALL MAC (with stylized wording), KENDALL STREET COMPANY (with design), and L. KENDALL (with design). Specifically, these marks consist in large part or entirely of the term “KENDALL”. 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). Here, because these marks consist in large part or entirely of the term “KENDALL,” they are similar in terms of sound and appearance.

 

Although the registered marks contain wording not found in the applied-for mark (specifically, & JAMES, CONRAD, MAC, & HYDE, STREET COMPANY, MILES, -JACKSON, and HARTCRAFT, respectively), that fact does not obviate this refusal. 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 registrants’ marks.  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 marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from that mark. Note that each of these cited marks, by contrast, does contain wording that distinguishes it from these other cited marks.

 

Additionally, because the applied-for mark and the marks in Registration Nos. 5009646, 5246722, 4929216, 4567076, 4412170, 5257054, 4603318, and 2532004 are all standard character or typed drawing marks, applicant could use its mark in a stylization and font similar or even identical to that of the registrants, which would increase the likelihood of confusion. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). 

 

Although the applied-for mark is a standard character mark and the marks in Registration Nos. 5694825, 5593632, and 5018352 are special form marks, that fact does not obviate this refusal. First, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Second, 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 and/or services.  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)).

 

 

 

Ultimately, when purchasers call for the goods of the applicant and the goods/services of the registrants using marks that are very similar in sound, appearance and meaning, they are likely to believe that the marks identify a single source of goods and/or services. Thus, the marks are confusingly similar.

           

Similarity of the applied-for mark to the marks in Registration Nos. 5104354 and 3446761

 

Here, applicant’s standard character mark, KENDALL, is confusingly similar to the registered standard character marks KENDAL & HYDE and KENDAL BOOTGLOW. Specifically, these marks consist in large part or entirely of the term “KENDALL” or “KENDAL”. 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). Here, because these marks consist in large part or entirely of the term “KENDALL” or “KENDAL,” they are similar in terms of sound and appearance.

 

Although the applied-for mark contains an additional letter “L” at the end of the wording “KENDAL” that fact does not obviate this refusal. These parts of the marks are phonetic equivalents, and slight differences in appearance will not overcome a likelihood of confusion where, as here, they do not alter the overall commercial impression of the mark.

 

Although the registered marks contain wording in addition to the wording “KENDAL” or “KENDALL” (specifically, & HYDE and BOOTGLOW, respectively), that fact does not obviate this refusal. 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 registrants’ marks.  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 marks because it contains the phonetic equivalent of some of the wording in the registered marks and does not add any wording that would distinguish it from that mark.

 

Additionally, because the applied-for mark and the registered marks are all standard character marks, applicant could use its mark in a stylization and font similar or even identical to that of the registrants, which would increase the likelihood of confusion. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).

Ultimately, when purchasers call for the goods of the applicant and the goods of the registrants using marks that are very similar in sound, appearance and meaning, they are likely to believe that the marks identify a single source of goods. Thus, the marks are confusingly similar.

 

Relatedness of the Goods and/or Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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).

 

            Relatedness of the applicant’s goods to those identified in Registration No. 5593994

 

Applicant’s goods are identified as “Fragrances; eau de parfum; eau de toilette; perfumes; hair care preparations; hair styling preparations; bath and shower gels; bubble bath; body powders; body lotions; body creams; face lotions; body milks; skin toners; skin cleansers; beauty masks; body scrubs; facial scrubs; body oils; deodorant for personal use; lip balm; lip gloss; cosmetics; cosmetic preparations; nail polish; nail polish remover; and nail care preparations” in International Class 3.

 

Registrant’s goods are identified as “Microdermabrasion apparatus; Electric foot spa massagers” in International Class 10.

 

The attached Internet evidence, consisting of screenshots from PMDBeauty.com, TrophySkin.com, and MichaelToddBeauty.com establishes that the same entity (here PMD, Trophy Skin, and Michael Todd) commonly provides the relevant goods (here, on one hand, microdermabrasion apparatus, and, on the other hand, body lotions, body creams, face lotions, beauty masks, cosmetics, cosmetic preparations, skin cleansers, skin toners, and/or lip balm) and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Relatedness of the applicant’s goods to those identified in Registration Nos. 5219431 and 2532004

 

In Registration No. 5219431, registrant’s goods are identified as, in relevant part, “Furniture; massage beds being massage tables in the nature of bed furniture used in massage services; massage chairs in the nature of chair furniture used in massage services, and massage tables; cushions; mattresses; pillows; neck support pillows; neck support roll cushions; reclining chairs; chairs; sofas” in International Class 20.

 

In Registration No. 2532004, registrant’s goods are identified as “Ready-made picture frames, picture frame moldings” in International Class 20.

 

The attached Internet evidence, consisting of screenshots from KateSpade.com, SothebysHome.com, Gucci.com, 1stDibs.com, Macys.com, RalphLauren.com, and RalphLaurenHome.com, establishes that the same entity (here, Kate Spade, Gucci, Vera Wang, and Ralph Lauren) commonly provides the relevant goods (here, on one hand, fragrances, eau de parfum, and/or perfumes, and, on the other hand, ready-made picture frames, furniture, and/or chairs) and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Relatedness of the applicant’s goods to those identified in Registration Nos. 5041395, 5009646, 4567076, and 5018352

 

In Registration No. 5041395, registrant’s goods are identified as “Jewelry boxes; Jewelry cases; Jewelry organizer cases; Leather jewelry and accessory boxes; Watch boxes; Watch winders; Cases for watches and clocks; Clocks; Jewelry armoires; Wooden jewellery boxes” in International Class 14.

 

In Registration No.  5009646, registrant’s goods are identified as, in relevant part, “Jewelry; Watches” in International Class 14.

 

In Registration No. 4567076, registrant’s goods are identified as “Jewelry, namely rings, stack rings of precious metals, cuff rings of precious metals, earrings, hoops, ear cuffs, bangles, bracelets, necklaces, charms, charms for collar jewelry and bracelets, pendants, medallions, key rings of precious metals” in International Class 14.

 

In Registration No. 5018352, registrant’s goods are identified as “Precious metals and their alloys; goods made of precious metals or coated therewith, not included in other classes, namely, necklaces, ornamental pins, bracelets, rings, earrings, charms; jewelry chains, brooches, jewelry ornaments, ornamental pins, hat ornaments of precious metal; jewellery, not including key chains; jewellery cases in precious metals, precious stones; semi-precious stones, pearls, costume jewellery, cuff links, horological and chronometric instruments, stopwatches, watches, wristwatches, watch bands, straps for wristwatches, watch straps, watch chains, watch cases, watch glasses, watch glasses, watch springs, cases for watches, pocket watches, not including clocks” in International Class 14.

 

The attached Internet evidence, consisting of screenshots from KateSpade.com, RalphLauren.com, RalphLaurenHome.com, TheRealReal.com, and Gucci.com, establishes that the same entity (here, Kate Spade, Ralph Lauren, and Gucci) commonly provides the relevant goods (here, on one hand, fragrances, eau de parfum, and/or perfumes, and, on the other hand, jewelry boxes, jewelry cases, jewelry, and/or necklaces) and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Relatedness of the applicant’s goods to those identified in Registration Nos. 5009646, 4412170, and 5104354

 

In Registration No.  5104354, registrant’s goods are identified as “Backpacks, book bags, sports bags, bum bags, wallets and handbags” in International Class 18.

 

In Registration No. 5009646, registrant’s goods are identified as, in relevant part, “All purpose sport bags; All-purpose athletic bags; All-purpose carrying bags; Backpacks; Billfolds; Handbags; Tote bags; Wallets” in International Class 18.

 

In Registration No. 4412170, registrant’s goods are identified as “Handbags; leather bags and wallets; leather bags, suitcases and wallets; leather cases; leather handbags; leather purses; purses” in International Class 18.

 

The attached Internet evidence, consisting of screenshots from KateSpade.com, Gucci.com, and Macys.com, establishes that the same entity (here, Kate Spade, Ralph Lauren, and Gucci) commonly provides the relevant goods (here, on one hand, fragrances, eau de parfum, and/or perfumes and on the other hand, wallets and/or leather wallets) and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Relatedness of the applicant’s goods to those identified in Registration Nos. 5246722, 4929216, 5694825, 5593632, 5257054, and 3446761

 

In Registration No. 5246722, registrant’s goods are identified as “Bathing suits; Blouses; Caps; Coats; Dresses; Gloves; Hats; Jackets; Loungewear; Pajamas; Pants; Raincoats; Rainwear; Robes; Scarves; Shirts; Shorts; Skirts; Suits; Sweaters; Sweatpants; Sweatshirts; Swimsuits; Swimwear; Tops; Trousers” in International Class 25.

 

In Registration No. 4929216, registrant’s goods are identified as “footwear, namely, sandals, loafers, flip flops” in International Class 25.

 

In Registration No. 5694825, registrant’s goods are identified as “Clothing, namely, t-shirts, hats, pants, sweatshirts, tops, bottoms and hoodies” in International Class 25.

 

In Registration No.  5593632, registrant’s goods are identified as “T-shirts” in International Class 25.

 

In Registration No.  5257054, registrant’s goods are identified as, in relevant part, “Footwear; shoes” in International Class 25.

 

In Registration No.  3446761, registrant’s goods are identified as “Clothing, namely, sweatshirts, T-shirts, shirts, turtlenecks, pants, shorts, leggings, socks, tights, sport caps, cloth bibs, bathing suits, Halloween costumes and masquerade costumes, cover-ups, boots, shoes, underwear, nightshirts, pajamas, nightgowns, gloves and scarves, sandals, bath robes, dresses, sweatpants, skirts, jackets, vests and hats, and bicycling gloves” in International Class 25.

 

The attached Internet evidence, consisting of screenshots from Gucci.com, KateSpade.com, and RalphLauren.com, establishes that the same entity (here, Gucci, Kate Spade, and Ralph Lauren) commonly provides the relevant goods (here, on one hand, fragrances, eau de parfum, and/or perfumes, and, on the other hand, tops, t-shirts, footwear, shoes, and/or sandals) and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Relatedness of the applicant’s goods to those identified in Registration No. 4603318

 

Registrant’s goods are identified as “Bar soap; Skin soap” in International Class 3.

 

The attached Internet evidence, consisting of screenshots from LOccitane.com, Origins.com, and ThePaperStore.com establishes that the same entity (here, L’Occitane, Origins, and Crabtree & Evelyn) commonly provides the relevant goods (here, on one hand, bar soap and/or skin soap, and, on the other hand, body milk, fragrances, perfumes, eau de toilette, bath and shower gels, body powder, and/or hair care preparations) and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Relatedness of the applicant’s goods to the services identified in Registration No. 5257054

 

Registrant’s services are identified as, in relevant part, “Online retail store services featuring fashion goods, namely, footwear” in International Class 35.

 

The attached Internet evidence, consisting of screenshots from Gucci.com, KateSpade.com, and RalphLauren.com, establishes that the same entity (here, Gucci, Kate Spade, and Ralph Lauren) commonly provides the relevant goods and/or services (here, on one hand, fragrances, eau de parfum, and/or perfumes, and, on the other hand, online retail store services featuring fashion goods, namely, footwear) and markets the goods and/or services under the same mark.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

The refusal applies to all of the applicant’s goods because all of the remaining goods identified by the applicant are also cosmetics and/or toiletry preparations which are generally sold in the same category and under the same mark.

 

Ultimately, when purchasers encounter the applicant’s goods and the registrants’ goods and/or services, they are likely to be confused as to the source of goods and/or services by the relationship between them. Thus, the goods and/or services are closely related.

 

Therefore, because the marks are confusingly similar and the goods and/or services are closely related, purchasers encountering these goods and/or services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Response to Section 2(d) – Likelihood of Confusion Refusal

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88309211 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. 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 application.

 

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 mark in the referenced application. 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.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to the refusal above and the requirement below within six months of the mailing date of this Office Action to avoid abandonment.

 

REQUIREMENT

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement:

 

ACCEPTABLE WRITTEN CONSENT REQUIRED

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Applicant must submit both (A) a consent statement and (B) a written consent. Although applicant has provided an acceptable consent statement, applicant’s written consent is unacceptable. Applicant must submit an acceptable written consent personally signed by the named individual in the following format:

 

“I, Kendall Jenner, consent to the use and registration of my name, Kendall, as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

RESPONSE GUIDELINES

 

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. 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

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  

 

 

/Dana Dickson/

Examining Attorney

Law Office 113

(571) 270-7552

dana.dickson@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 July 17, 2019 for

U.S. Trademark Application Serial No. 88413516

 

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. 

 

 

/Dana Dickson/

Examining Attorney

Law Office 113

(571) 270-7552

dana.dickson@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 17, 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.”