To: | Platinum Investment Group Pty Ltd (abates@bates-bates.com) |
Subject: | U.S. Trademark Application Serial No. 88464132 - HIDEAWAY - N/A |
Sent: | August 31, 2019 08:37:55 PM |
Sent As: | ecom111@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 Attachment - 17 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88464132
Mark: HIDEAWAY
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Correspondence Address:
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Applicant: Platinum Investment Group Pty Ltd
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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 31, 2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 3696267. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
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.
Comparison of the Marks:
Applicant’s mark is HIDEAWAY displayed in stylized font. Registrant’s mark is HIDEAWAY and is displayed in a standard characters format. The marks are the same in that the registered mark is entirely incorporated into the applied-for mark. The marks are different in that the applied-for mark is stylized. Despite these differences, applicant’s proposed mark is virtually identical in sound and appearance to the registered mark(s) as explained below, and creates the same commercial impression.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The marks are entirely identical in sound as both marks contain the identical wording HIDEAWAY. 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).
In sum, given the highly similar appearance and sound of the marks, it follows that the marks create a highly similar commercial impression and therefore the marks are confusingly similar.
Comparison of the Goods:
Applicant’s goods are ”Antiperspirant soaps; Bar soaps; Bath soaps; Body soaps; Cakes of soap; Cakes of toilet soap; Cosmetic soaps; Deodorant soaps; Deodorising soaps; Facial soaps; Laundry soaps; Liquid soaps (non medicated); Non-medicated soap creams for use in washing; Non-medicated soap products; Non-medicated soap-based handwashes; Non-medicated soaps; Non-medicated toilet soaps; Perfumed soaps; Perfumed toilet soaps; Shaving soaps; Shower soaps; Soaps for foot perspiration; Soaps free washing emulsions for the body; Soaps for laundry use; Soapy detergents for household use; Sugar soaps; Toilet soaps; Body washes; Body creams; Body scrubs; Body oils; Bath oils; Massage oils; Scented oils.”
Registrant’s goods are “COSMETICS, NAMELY, CONCEALER, LIQUID CONCEALER, PENCIL CONCEALER, CREAM CONCEALER, POWDER CONCEALER, BLEMISH CONCEALER.”
As the case law and attached evidence shows, applicant’s and registrant’s goods and/or services are commercially related.
Aveda®
Concealer:
http://www.aveda.com/product/5335/17071/makeup/face/inner-light-concealer#/shade/01%2FBirch
Soaps and oil:
http://www.aveda.com/rosemary-mint-products
The Body Shop®
Concealer:
http://www.thebodyshop.com/en-us/makeup/concealer/c/c03056
Soaps, oils, and hand wash:
http://www.thebodyshop.com/en-us/collection/strawberry/c/c00112
Dior®
Concealers:
http://www.dior.com/en_us/makeup/complexion/concealers
Soap:
http://www.dior.com/en_us/products/beauty-Y0996342-miss-dior-blooming-scented-soap
Origins®
Body wash, oil, hand wash, soap:
Concealer:
This evidence establishes that the same entity commonly manufactures/produces/provides the relevant goods and/or services and markets the goods and/or services under the same mark and the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
In total, the marks create the same commercial impression and the evidence shows that the goods and/or services are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the goods and/or services originate from a common source. Therefore, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Some of the wording in identification of goods is indefinite and must be clarified because it is indefinite and too broad. 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. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The wording “Deodorising soaps” is indefinite because the exact nature of the goods are not specified.
Therefore, applicant must amend this wording to specify either (1) the common generic name of each product or (2) the nature, purpose, and/or intended use of each product. See TMEP §§1402.01, 1402.03.
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.
Applicant may adopt the following wording, if accurate:
Class 3 Antiperspirant soaps; Bar soaps;
Bath soaps; non-medicated body soaps; Cakes of soap; Cakes of toilet soap; Cosmetic soaps; Deodorant soaps; Deodorising soaps, namely, cleaning
preparations; non-medicated facial soaps; Laundry soaps; non medicated liquid soaps (non medicated);
Non-medicated soap creams for use in washing; Non-medicated soap products; Non-medicated soap-based handwashes; Non-medicated soaps; Non-medicated toilet soaps; Perfumed
soaps; Perfumed toilet soaps; Shaving soaps; non medicated shower soaps; Soaps for foot perspiration; Soaps free washing emulsions for the body; Soaps for laundry use;
Soapy detergents for household use; non medicated sugar soaps; Toilet soaps; Body washes; Body creams; Body scrubs; Body oils; Bath oils; Massage oils; Scented
oils
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Should applicant elect to add a class(es), applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Applicant must specify the pattern/background presented in the wording of the mark. If the suggested amendment provided below is inaccurate or incomplete, applicant should make the necessary changes to the description of the mark.
The following description is suggested, if accurate: The mark consists of the word HIDEAWAY in stylized font having a fabric effect.
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
Q Queen
Examining Attorney
LO 111
571-272-6695
Esther.Queen@upsto.gov
RESPONSE GUIDANCE