To: | Zhong, Jing (jojojojoy@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88487015 - AUDACE - N/A |
Sent: | October 17, 2019 09:42:11 AM |
Sent As: | ecom124@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 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88487015
Mark: AUDACE
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Correspondence Address:
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Applicant: Zhong, Jing
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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: October 17, 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.
ADVISORY - PRIOR-FILED APPLICATION
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 mark in the referenced application. 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is AUDACE (in standard character form) for “Cosmetics, Facial beauty masks, Face creams for cosmetic use, Facial lotion, Facial washes, Skin softeners, Wrinkle removing skin care preparations, Make-up, Cologne, Facial concealer, Shampoo-conditioners, Perfume oils, SPF sun block sprays, Cosmetic preparations, Cosmetic preparations for slimming purposes, Eye-shadow, Spot remover, Facial cleansing milk False eyelashes, Massage oil, Nutritional oils for cosmetic purposes, Skin masks, Cosmetic oils, Cosmetic creams for skin care, Skin whitening preparations, Cosmetic preparations for skin care, Non-medicated skin care creams and lotions, Skin care preparation, namely, body polish” in International Class 3.
Registrants’ marks are:
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 Marks:
Comparison as to Reg. No. 5842732 – AUDACE
In the present case, applicant’s mark is AUDACE and the wording in registrant’s mark is AUDACE. These marks are identical in 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. Id.
Therefore, the marks are confusingly similar.
Comparison as to Reg. No. 4933307 - AUDACIOUS
Here, applicant’s and registrant’s marks are similar because they share the identical first two syllables, AUDAC. Applicant’s substitution of IOUS for E fails to create a distinct commercial impression because the connotation of the marks remains the same. The examining attorney refers to the attached evidence from Merriam-Webster Dictionary defining AUDACE and AUDACIOUS as bold.
Given the shared wording AUDAC, the marks at issue create a highly similar overall commercial impression which is sufficient for finding a likelihood of confusion.
Relatedness of Goods and Services:
The compared goods 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).
Relatedness as to Reg. No. 5842732 – AUDACE
Here, applicant’s cosmetics, cologne and oils and registrant’s hair irons and eyelash curlers are closely related because the same entity commonly provides applicant’s and registrant’s goods and services, under the same mark.
The third-party Internet evidence shows that the applicant’s goods and the registrant’s goods are closely related and travel through similar trade channels to the same class of consumers.
Thus, upon encountering registrant’s mark used for crimping irons; curling tongs; electric hair clippers; electric hair curling irons; electric irons for styling hair; electric shavers; eyelash curlers; fingernail clippers; flatware, namely, forks, knives, and spoons; gardening shears and scissors; gardening trowels; hand tools, namely, pincers; manicure sets, electric and applicant’s mark used for cosmetics, facial beauty masks, face creams for cosmetic use, facial lotion, facial washes, skin softeners, wrinkle removing skin care preparations, make-up, cologne, facial concealer, shampoo-conditioners, perfume oils, spf sun block sprays, cosmetic preparations, cosmetic preparations for slimming purposes, eye-shadow, spot remover, facial cleansing milk false eyelashes, massage oil, nutritional oils for cosmetic purposes, skin masks, cosmetic oils, cosmetic creams for skin care, skin whitening preparations, cosmetic preparations for skin care, non-medicated skin care creams and lotions, skin care preparation, namely, body polish, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Relatedness as to Reg. No. 4933307 – AUDACIOUS
In this case, the application uses broad wording to describe cosmetics, makeup and cosmetic preparations, which presumably encompasses all goods of the type described, including registrant’s more narrow cosmetics, namely, lipstick, lipstain, lip gloss, lip balm, lip liners and mascara. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Given the foregoing, registration is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
IDENTIFICATION OF GOODS
The wording “Facial cleansing milk False eyelashes” is unacceptable as indefinite because it appears that a semi-colon was omitted. Applicant must specify the wording.
Applicant may adopt any or all of the following suggested amendment to the identification of goods:
- International Class 3: Cosmetics, Facial beauty masks, Face creams for cosmetic use, Facial lotion, Facial washes, Skin softeners, Wrinkle removing skin care preparations, Make-up, Cologne, Facial concealer, Shampoo-conditioners, Perfume oils, SPF sun block sprays, Cosmetic preparations, Cosmetic preparations for slimming purposes, Eye-shadow, Spot remover, Facial cleansing milk; False eyelashes, Massage oil, Nutritional oils for cosmetic purposes, Skin masks, Cosmetic oils, Cosmetic creams for skin care, Skin whitening preparations, Cosmetic preparations for skin care, Non-medicated skin care creams and lotions, Skin care preparation, namely, body polish
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.
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.
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
/Tara L. Bhupathi/
Examining Attorney
Law Office 124
(571) 272-5557
tara.bhupathi@uspto.gov
RESPONSE GUIDANCE