United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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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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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: April 09, 2020
This Office action is in response to applicant’s communication filed on 03/11/2020.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). In addition, applicant was previously refused registration in International Class 003 because the webpage specimen was merely advertising for goods. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting a substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.
Thus, the refusal to register the applied-for mark in International Class(es) 003 is now made final because applicant failed to provide evidence of use of the mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
FINAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
The Marks Are Similar
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.
Applicant argues that customers who are sensitive to products and brands in cosmetics industry are less likely to confuse source with different marks. This is not persuasive. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).
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
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).
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 directly overlap with the registrant’s various cosmetic, bathing goods, soap, hair care and skin goods.
Applicant contends that the goods are not related or similar because applicant’s goods are restricted to wipes, the goods of applicant and registrant are located on different shelves of merchandise, the goods have different chemical compositions, applicant’s wipes are reusable goods, the channels of trade are different because applicant’s goods are directed to babies while the registrant’s goods are directed to adults. The examining attorney is not persuaded.
First, applicant’s goods include wipes, but includes many other type of goods that are not restricted to only wipes, and all of the goods are not restricted to use with babies only. Furthermore, none of the registrant’s goods are restricted from use with babies, and the uses of the goods could clearly overlap. Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Second, applicant’s goods include many basic, common, and low cost types of body and skin care products. For products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)).
Finally, applicant's wipes are closely related to the registrant's cosmetics and soaps because all are types of goods that often are produced by the same manufacturer and marketed under the same trademark. See the attached sample third party registrations showing that these types of goods are sold under the same trademark.
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 properly finally refused under Trademark Act Section 2 (d) based on a likelihood of confusion.
Applicant must address the following additional grounds for final refusal.
FINAL: Substitute Specimen Not Acceptable
Webpage specimen does not include required URL. Registration is finally refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce. See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.
Substitute Specimen does not show use of the mark in commerce. In the alternative, registration is finally refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 003. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used 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. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Specifically, the webpage specimen is advertising for a Class 035 subscription-based order fulfillment services in the field of class 003 goods including cleaning wipe kits that comprises multiple goods as part a starter pack. The specimen does not show use for class 003 goods.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, 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 and/or services identified in the application or amendment to allege use. Applicant must also submit 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.”
(3) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
How to respond. Click to file a response to this nonfinal Office action.
Anthony Rinker
/Anthony Rinker/
Trademark Examining Attorney
Law Office 102
Ph. 571-272-5491
anthony.rinker@uspto.gov
RESPONSE GUIDANCE
