To: | WELCOS CO., LTD. (dockmpls@merchantgould.com) |
Subject: | U.S. Trademark Application Serial No. 88466592 - BIOMAX - 12109.152US1 |
Sent: | September 06, 2019 03:09:01 PM |
Sent As: | ecom109@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. 88466592
Mark: BIOMAX
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Correspondence Address:
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Applicant: WELCOS CO., LTD.
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Reference/Docket No. 12109.152US1
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: September 06, 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
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
In the present case, applicant’s mark is BIOMAX and registrant’s mark is BIO-MAX. These marks are essentially identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are essentially identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
It is noted that the registered mark includes a hyphen; however, this is insufficient to overcome a likelihood of confusion under Section 2(d). Please note that the marks are essentially phonetic equivalents and thus sound similar. 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).
Comparison of the Goods
The applicant’s goods are “Cosmetic; Cleansing foam; Make-up; Beauty masks; Massage cream; Sun-block lotions; Hand creams; Hair colorants; Hair conditioners; Shampoos; Essences; Cleansing cream; Face powder(cosmetics); Cosmetic creams for skin care; Lip brighteners; Make-up removing preparations; Body cleanser; Sunscreen creams; Neutralizers for permanent waving; Hair gel” and the registrant’s goods are “vitamin, mineral and nutritional dietary supplements in tablet, [ capsule and powder ] form exclusively for human consumption”. The goods of both parties are likely to be marketed in the same manner and travel in the same channels of trade, which may lead consumers to believe that the goods emanate from a common source.
In light of the above, because the mark are essentially identical and the goods being provided by both parties are related, registration must be refused under Section 2(d) of the Trademark Act.
Identification of Goods
The identification of goods requires clarification, as portions of the wording are unacceptable as indefinite. See TMEP §1402.01. The applicant must provide the common commercial name for the goods or specify the nature of the goods. The proper classification of the goods will depend on the type of goods that are being provided. The applicant may adopt the following wording, if accurate:
“Cosmetics; Cleansing foam for personal use; Make-up; Beauty masks; Massage cream; Sun-block lotions; Hand creams; Hair colorants; Hair conditioners; Shampoos; Essences, namely, __ [specify type, e.g., ethereal essences, mint essence being essential oil]; Cleansing cream; Face powder; Cosmetic creams for skin care; Lip brighteners, namely, __ [specify nature of goods, e.g., non-medicated cosmetic lightening cream for lips]; Make-up removing preparations; Body cleanser; Sunscreen creams; Neutralizers for permanent waving being permanent wave preparations; Hair gel,” in International Class 3.
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.
Information for TEAS RF Applicants
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.
If the applicant has any questions or requires assistance in responding to this Office action, please contact the undersigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action
/Amy Alfieri/
Trademark Examining Attorney
Law Office 109
571.272.9422
amy.alfieri@uspto.govTrademark Examining Attorney
Law Office 109
571-272-9422
amy.alfieri@uspto.gov
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