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. 88470482
Mark: PUREWAVE
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Correspondence Address: IP LAW OFFICES OF JOEL VOELZKE, APC
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Applicant: Pado, Inc.
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Reference/Docket No. 220-052
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 26, 2019
This Office action is in response to applicant’s communication filed on October 27, 2019 (hereinafter, “Response”).
The previous Office Action of September 4, 2019, and all supporting evidence attached thereto, is incorporated by reference herein.
After review of the Response, the following is determined:
Refusal made final
Section 2(d) Likelihood of Confusion Refusal
I. 2(d) Standard of Review
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.
II. Application of the 2(d) Standard of Review
The cited registration is the mark PURWAVE for “device for non-surgical cosmetic treatments, namely, an electric massage apparatus”.
The applied-for mark is PUREWAVE for (as amended) “Hand-held electric massage apparatus for therapeutic non-cosmetic purposes, namely, hand-held electric massagers for massaging the back, neck, feet, arms, and legs”.
A. Comparison of Sound, Appearance and Meaning
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).
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).
Applicant’s mark PUREWAVE is confusingly similar to the cited registered mark PURWAVE because the marks share the phonetically identical suggestive conjoined term “PURE WAVE”, presented as one word for each mark, with the cited registered mark dropping the silent letter “E” between the letters “R” and “W” in the mark. The marks are thus visually highly similar, are phonetically identical, and have the same meaning and commercial impression.
Consumers would be likely to confuse the source of related goods offered under such similar marks.
B. Comparison of Goods
The goods of the cited registration are an electric massage apparatus for use in providing non-surgical cosmetic treatments.
The applicant’s goods are a hand-held electric massage apparatus for therapeutic purposes non-cosmetic purposes, for use in massaging the back, neck, feet, arms, and legs.
Consumers are likely to confuse the source of the applicant’s and registrant’s goods as the marks under which the goods are offered are almost identical, and as the goods with which they are used are both electric massage apparatuses for use on the body.
See the previously attached website evidence showing that electric massagers for cosmetic use are also commonly intended for use in massaging other parts of the user’s body:
And see the additional attached website evidence showing that massage apparatuses commonly are used for providing both cosmetic and therapeutic benefits to the user:
See also the additional attached website evidence showing that massagers for cosmetic/face purposes and therapeutic/body use are commonly offered under the same mark and/or through the same channels of trade:
Furthermore, as the goods of the applied for mark and the cited registration are related and possibly overlapping, they may travel within the same channels of trade.
C. Summary of 2(d) review
The applied for mark is confusingly similar to the cited registered mark because the marks are phonetically identical, visually highly similar, and create the same commercial impression and have the same meaning. Because the marks are confusingly similar and because the goods are related and/or travel within the same channels of trade, the applicant’s mark is refused on grounds of likelihood of confusion.
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
Applicant argues against the likelihood of confusion refusal by arguing that: (1) the marks are visually and phonetically different, and that consumers would not confuse the two marks because of the difference in spelling in the marks; (2) the goods at issue differ, are used by different end users, have different purposes, move through different channels of trade, and there have been no instances of actual consumer confusion.
In support of its arguments, applicant provided a declaration of its CEO, stating that applicant has been using its mark in connection with the identified goods for more than four years, has spent significant amounts of money on widely-seen marketing, and has sold more than $71 million in massagers. Applicant’s declaration of its CEO further states that there is no overlap in cosmetic massager devices and therapeutic muscle massager devices, the intended consumers differ, there has been no actual consumer confusion over the source of applicant’s and registrant’s goods, and that the channels of trade differ as applicant only direct-sells to consumers.
As to the similarity of the 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). Here, the marks are identical but for an omitted letter “E” in the middle of the registered mark. The marks at issue are otherwise visibly similar, could be pronounced the same way, and have the same meaning and commercial impression of an unadulterated wave.
There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such 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).
As shown in the attached and previously provided evidence, goods such as those identified in the registration and application are commonly produced by a single source, are commonly offered under the same marks, and are commonly available through shared channels of trade. There is nothing in the registration to indicate a different intended consumer purchaser or end user of registrant’s goods from applicant’s purchasers and end users; and the identifications for neither applicant nor registrant restrict the channels of trade.
Lastly, “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
For the above stated reasons, the Trademark Act Section 2(d) refusal is FINAL.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Kaelie E. Kung/
Examining Attorney
Law Office 103
571-272-8265
kaelie.kung@uspto.gov
RESPONSE GUIDANCE
