To: | BECAUSE BABIES, LLC (Elizabeth@yanglawoffices.com) |
Subject: | U.S. Trademark Application Serial No. 88457723 - EARTHLY - N/A |
Sent: | August 30, 2019 08:29:50 PM |
Sent As: | ecom102@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88457723
Mark: EARTHLY
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Correspondence Address: LAW & MEDIATION OFFICES OF ELIZABETH YAN
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Applicant: BECAUSE BABIES, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: August 30, 2019
Search of the Office Records
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3632781, 4015117, 4390882, 4728187, 4974535 and 5626465. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant’s mark and the Registered Marks are Similar
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)).
Applicant's mark is “EARTHLY”. The registered marks are “EARTHLY BOTANICALS”, U.S. Registration No. 3632781, “EARTHLY BODY”, U.S. Registration No. 4015117, “EARTHLY HERBALS”, U.S. Registration No. 4390882, “EARTHLY HEALTHY”, U.S. Registration No. 4728187, “EARTHLY AROMAS”, U.S. Registration No. 4974535, and “EARTHLY SUDS CO.”, U.S. Registration No. 5626465, respectively. Applicant’s mark is similar in appearance and sound to the registered marks in that they all share the common term(s) EARTHLY.
In addition, the all of the additional terms in the registered marks are disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Accordingly, EARTHLY is the dominant term in the registered marks, and there are no terms in applicant’s mark to distinguish it from the registered marks.
Accordingly, the marks are confusingly similar.
The Goods Are Identical or are Highly Related
Applicant’s goods are identified as “Baby hair conditioner; Baby hand soap; Baby lotion; Baby oil; Baby powder; Baby shampoo; Baby suncreams; Body creams; Body lotion; Body lotions; Body scrub; Body scrubs; Face creams; Hair care lotions; Hair conditioners; Hair gels; Hair lighteners; Hair lotion; Hair mousse; Hair nourishers; Hair oils; Hair rinses; Hair shampoo; Hair shampoos and conditioners; Hair spray; Hair sprays; Hair texturizers; Hair tonic; Hair tonics; Skin soap; Wipes impregnated with a cleaning preparation; Wipes impregnated with a skin cleanser; Baby wipes impregnated with cleaning preparations; Bar soap; Bath soaps; Body cream soap; Cosmetic products in the form of aerosols for skincare; Cosmetics sold as an integral component of non-medicated skincare preparations; Face and body beauty creams; Hair conditioners for babies; Liquid bath soaps; Moisturizing body lotions; Natural soap bars; Non-medicated hand soaps; Non-medicated herbal body care products, namely, body oils, salves, and lip balms; Non-medicated liquid soap; Non-medicated soaps for babies; Organic soap bars; Perfumed soaps; Scented body lotions and creams; Shampoos for babies; Skin and body topical lotions, creams and oils for cosmetic use; Skin care preparations, namely, body balm; Skin cleanser in liquid spray form for use as a baby wipe alternative.”
The goods for Registration No. 3632781 are identified as “Non-medicated skin and hair care preparations, cosmetics, hair shampoo, hair conditioner, skin and face moisturizers and conditioners.”
The goods for Registration No. 4015117 are identified as “Cosmetics; non-medicated lip balm; skin care preparations, namely, creams, lotions, sprays, oils, butters; scrubs, tonics, mists; hand care preparations, namely, lotions and creams; foot care preparations; namely, creams; hair care preparations, namely, shampoo, conditioners, gels, oils, lotions, sprays; shower and bath preparations, namely, gels, scrubs, aromatherapy body care preparations, namely, creams, lotions, sprays, oils, butters; scrubs, tonics; shaving cream; colognes, perfume; tanning preparations; massage oils in the form of candles.”
The goods for Registration No. 4390882 are identified as “Non-medicated herbal body care products, namely, lip balms, salves, creams, tinctures, and skin conditioners”
The goods for Registration No. 4728187 are identified as “Cosmetics; non-medicated lip balm; skin care preparations, namely, creams, lotions, sprays, oils, butters; scrubs, tonics, mists; hand care preparations, namely, lotions and creams; foot care preparations; namely, creams; hair care preparations, namely, shampoo, conditioners, gels, oils, lotions, sprays; shower and bath preparations, namely, gels, scrubs, aromatherapy body care preparations, namely, creams, lotions, sprays, oils, butters; scrubs, tonics; shaving cream; colognes, perfume; tanning preparations; massage oils in the form of candles.”
The goods for Registration No. 4974535 are identified as “Deodorant for personal use; Body scrubs; Non-medicated skin care preparations; liquid soap; Bar soap; Bath salts; Essential oils for aromatherapy use”
The goods for Registration No. 5626465 are identified as “Bar soap; non-medicated liquid soap; bath bombs; non-medicated lip balm; body scrubs; body lotion; non-medicated bath salts; deodorant for personal use; shampoo-conditioners; essential oils for use in aromatherapy; aromatherapy inhalers sold filled with essential oils; non-medicated skin creams with essential oils for use in aromatherapy”
The applicant's various cosmetic, bathing goods, soap, hair care and skin goods are closely related to the registrant's or diredtly ovelap with the registrant’s various cosmetic, bathing goods, soap, hair care and skin goods.
Thus, upon encountering the EARTHLY mark used on cosmetic, bathing goods, soap, hair care and skin goods, and the registered marks used on cosmetic, bathing goods, soap, hair care and skin goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Accordingly, registration is refused under Trademark Act Section 2 (d) based on a likelihood of confusion.
Applicant must address the following additional grounds for refusal.
Webpage Specimen Not Acceptable for Goods
Registration is refused because the webpage specimen in International Class(es) 003 is not an acceptable display associated with the goods and appears to be mere advertising material. See TMEP §904.07(a). The specimen, thus, fails to show the applied-for mark in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a).
To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders). TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012). If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2). In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders. See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).
In this case, the specimen does not include a way of ordering the goods in that there is only a price posted, there is no shopping cart function or dedicated telephone number or email address for placing an order. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq. Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. As stated above, webpage displays may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
Anthony Rinker
/Anthony Rinker/
Trademark Examining Attorney
Law Office 102
U.S. Trademark Office
Ph. 571-272-5491
anthony.rinker@uspt
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