United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88476431
Mark: MARIE CLAIRE
|
|
Correspondence Address: |
|
Applicant: MARIE CLAIRE ALBUM
|
|
Reference/Docket No. 879835
Correspondence Email Address: |
|
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 13, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03. A mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is MARIE CLAIRE for “Cleaning preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; toothpaste; hair spray; body and face lotions and creams; beauty masks; bath salts and bath preparations, not for medical purposes; cleaning and makeup removing preparations; make-up,” in International Class 003 and “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry and imitation jewelry for men and women; precious stones; horological and chronometric instruments; watches and clocks; component parts for jewelry, imitation jewelry, watches and clocks; boxes and cases for jewelry and watches; medals; key rings, key chains and charms therefor,” in International Class 014.
Registrant’s mark is MARIE CLAIRE for “women's boots, shoes and sandals,” in International Class 025.
It is noted that the applicant and registrant may be related companies, but that no supporting evidence is of record.
Standard of Law
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 and registrant’s mark are MARIE CLAIRE. These marks are 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 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 have closely similar appearances, sound, meanings, and overall commercial impressions, such that this factor weighs in favor of a likelihood of confusion.
Comparison of the Goods and Services and Trade Channels
Applicant’s goods are “Cleaning preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; toothpaste; hair spray; body and face lotions and creams; beauty masks; bath salts and bath preparations, not for medical purposes; cleaning and makeup removing preparations; make-up,” in International Class 003 and “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry and imitation jewelry for men and women; precious stones; horological and chronometric instruments; watches and clocks; component parts for jewelry, imitation jewelry, watches and clocks; boxes and cases for jewelry and watches; medals; key rings, key chains and charms therefor,” in International Class 014. Registrant’s goods are “women's boots, shoes and sandals,” in International Class 025.
Here, applicant’s goods and registrant’s goods are related because they are commonly offered by the same companies under the same mark and sold through the same trade channels to the same consumers. Therefore, consumers are accustomed to these goods/services emanating from the same source.
The attached Internet evidence consists of:
1. http://www.ralphlauren.com/?utm_source=PaidSearch&pkwid=Brand_Google_RLE_BR_US_X_Polo_BMM_X_%2Bpolo+%2Bralph+%2Blauren&gclid=EAIaIQobChMI2J-nyeDG5AIVj1qGCh09Ag8IEAAYASAAEgK9E_D_BwE&gclsrc=aw.ds – Ralph Lauren offers cosmetics, jewelry, and footwear;
2. Chanel offers cosmetics, jewelry, and footwear;
3. Dior offers cosmetics, jewelry, and footwear;
4. Gucci offers cosmetics, jewelry, and footwear;
5. Tom Ford offers cosmetics, jewelry, and footwear.
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. 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).
Therefore, applicant’s goods and/or services are related to registrant’s goods and/or services which weighs in favor of a likelihood of confusion.
Conclusion
In sum, the similarities between the marks’ appearances, sounds, meanings, and overall commercial impressions combined with the close relationship between the goods results in a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.
PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 87040424, 87903457 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF GOODS
Applicant may substitute the following wording, if accurate:
Cleaning preparations; soaps [applicant must specify the type, i.e., toilet soap, skin soap, non-medicated soaps, bar soaps, liquid soaps]; perfumery; essential oils; cosmetics; hair lotions; toothpaste; hair spray; body and face lotions and creams; beauty masks; bath salts and bath preparations, not for medical purposes; cleaning and makeup removing preparations; make-up
International Class 014
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other
classes [applicant must specify]; jewelry and imitation jewelry for men and women; precious stones; horological and chronometric instruments; watches and clocks;
component parts for jewelry, imitation jewelry, watches and clocks, namely, _____ [applicant must specify the parts]; boxes and cases for jewelry and watches; medals; key rings,
key chains and charms therefor
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). 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.
US APPLICATION IDENTIFICATION OF GOODS BEYOND THE SCOPE OF FOREIGN REGISTRATION
In this case, the U.S. application identifies the particular goods and/or services as follows: “Cleaning preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; toothpaste; hair spray; body and face lotions and creams; beauty masks; bath salts and bath preparations, not for medical purposes; cleaning and makeup removing preparations; make-up,” IN Class 003 and “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry and imitation jewelry for men and women; precious stones; horological and chronometric instruments; watches and clocks; component parts for jewelry, imitation jewelry, watches and clocks; boxes and cases for jewelry and watches; medals; key rings, key chains and charms therefor,” in Class 014.
However, the foreign registrations identifies the following goods and/or services:
France Reg. No. 1712365: “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; toothpaste”
EU Trademark No. 002389567: “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, imitation jewelry, precious stones; horological and chronometric instruments; watches,” in Class 014.
The following goods in the U.S. application exceed the scope of the goods in the foreign registrations because not included therein.
“hair spray; body and face lotions and creams; beauty masks; bath salts and bath preparations, not for medical purposes; cleaning and makeup removing preparations,” in Class 003 and
“boxes and cases for jewelry and watches; medals; key rings, key chains and charms therefor,” in Class 014.
Thus, these goods and/or services in the U.S. application are not acceptable and may not be amended to correspond with the goods and/or services in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
Response guidelines. 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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Jeff Molinoff/
Jeffrey S. Molinoff
U.S. Patent & Trademark Office
Examining Attorney
Law Office 122
571.272.7290
jeffrey.molinoff@uspto.
RESPONSE GUIDANCE