Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned Trademark Examining Attorney.

 

This Office action is in response to Applicant’s communication filed on November 4, 2019.

 

In a previous Office action dated September 20, 2019, the Trademark Examining Attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, Applicant was required to satisfy the following requirement: Submit attorney bar information and a statement of good standing.

 

Based on Applicant’s response, the Trademark Examining Attorney notes that the following requirements have been SATISFIED: Attorney bar information and statement of good standing provided.  See TMEP §§713.02, 714.04. 

 

Further, the Trademark Examining Attorney MAINTAINS and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that Applicant must address:

 

·         Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4671788.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4671788.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

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 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.  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 and differences in the marks.”); TMEP §1207.01.

 

Comparison of the Marks

 

Applicant's mark is MISIKI.

 

Registrant's mark is MISAKI.

 

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).

 

Here, Applicant’s standard character mark “MISIKI” is confusingly similar to Registrant’s standard character mark “MISAKI”.

 

Specifically, the marks are nearly identical apart from the vowel in the second syllable of the respective marks. Both marks consist entirely of the letters “MIS” followed by one vowel and then the letters “KI”. That Applicant’s mark contains a letter “I” as its second vowel sound while Registrant’s mark contains a letter “A” as its second vowel sound fails to obviate this refusal. Slight differences in the sound of similar marks, such as the slight difference in this case, will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

For the reasons set forth more fully above, the compared marks are confusingly similar.

 

Comparison of the Goods

 

Applicant's goods are Apparatus for tattooing; Beard clippers; Crimping irons; Curling tongs; Cuticle tweezers; Depilation appliances, electric and non-electric; Ear-piercing apparatus; Electric hair clippers; Electric hair crimper; Electric hair curling irons; Electric hair straightener; Electric hair straightening irons; Electric nasal hair trimmers; Eyelash curlers; Fingernail polishers, electric or non-electric; Hair-removing tweezers; Hair clippers for personal use, electric and non-electric; Manicure sets; Nail clippers; Nail files; Nail files, electric; Nail skin treatment trimmers; Pedicure implements, namely, nail files, nail clippers, cuticle pushers, tweezers, nail and cuticle scissors; Pedicure sets; Razor cases; Razors, electric or non-electric; Tattoo needles.

 

Registrant's goods are Bags and cases specially adapted for holding or carrying hair cutting scissors and shears; Callus cutters; Callus rasps; Cases for razors; Cuticle scissors; Embroidery scissors; Hair clippers; Hair cutting scissors; Hair trimmers; Hand tools for use in tying artificial fishing flies, namely, tweezers, scissors, and clamping forceps; Hand-operated hair clippers; Manicure implements, namely, nail cutters, nail files, nail clippers, cuticle pushers, cuticle nippers, tweezers, nail and cuticle scissors; Manicure tooling sets, comprised of cuticle snippers, cuticle pusher, nail clipper, and nail cutter; Nail scissors; Non-electric razors; Pedicure implements, namely, nail cutters, nail files, toenail clippers, cuticle pushers, toenail nippers, hangnail nippers, tweezers, nail and cuticle scissors; Pedicure tooling sets, comprised of cuticle snippers, cuticle pusher, nail clipper, and nail cutter; Razor blades; Razor cases; Razor knives; Razor strops; Razors; Razors and razor blades; Safety razors; Scissors; Scissors for household use; Sewing scissors; Shears; Straight razors; Tailor's shears; Tweezers.

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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 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).

 

When analyzing Applicant’s and Registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Here, Applicant’s and Registrant’s goods are identical with respect to razors, cuticle scissors, hair clippers, manicure sets, pedicure implements, predicate sets, and razor cases. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). 

 

The remaining goods are either encompassing or highly related to one another. The attached Internet evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See previously attached http://www.spaandequipment.com/Tools.html; http://www.pinkiou.com/product/; http://www.pinkiou.com/product-category/manicure-and-pedicure/. See also http://www.conair.com/c/30c58/skin-care-manipedi-beauty-tools/; http://www.conair.com/c/24b36/men39s-grooming-hair-trimmers/; http://www.conair.com/c/1c3/hair-care-curling-irons/; http://www.tweezerman.com/shop-by-product/tweezers.html; http://www.tweezerman.com/shop-by-product/lashes.html; http://www.revlonhairtools.com/; http://www.revlon.com/tweezers?sort=product%20type; http://www.revlon.com/manicure?sort=product%20type; http://www.sephora.com/brand/sephora-collection/small-tools; http://www.sephora.com/brand/sephora-collection/hair-tools.

 

The Trademark Examining Attorney also previously attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both Applicant and Registrant in this case.  This evidence shows that the goods listed therein are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). See previously attached Registration Nos. 5844904, 5862720, 5860883, 5845601, 5843167, 5838407, 5780638, 5818100, 5814954, and 5774904.

 

Moreover, to the extent the evidence may not address all of the items in Applicant’s identification, relatedness does not have to be established for every product.  It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some items encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).  In this case, relatedness has been established for many of the identified goods, which is enough to show a likelihood of confusion.

 

Collectively, this evidence demonstrates that the parties’ goods are similar in nature and/or regularly travel in the same trade channels under the same mark.  For these reasons, consumers are likely to mistakenly conclude that the goods emanate from the same source. Therefore, Applicant’s and Registrant’s goods are considered related for likelihood of confusion purposes. 

 

Applicant's Arguments

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant argues that the compared marks are visually and phonetically different from one another. Applicant avers that “although the marks contain some overlapping characters, they provide a different impression if considered in entirety”. However, Applicant’s characterization that the marks have “some overlapping characters” underestimates the near identity of the marks at issue. Specifically, as stated above, the marks contain all overlapping characters except one different letter representing the respective second vowel sounds. Such a minute difference in sound fails to obviate the refusal and does not detract from the confusing similarity in this case. The marks convey the same overall commercial impression as they both begin with the letters “MIS” and end with the letters “KI”.

 

Applicant also sets forth various cases where marks such as “ROMAN” and “ROMANBURGER”, “IVY LEAGUE” and “IVY HALL”, and “LAWN-BOY” and “LAWN PUP” were held not confusingly similar. However, none of the listed examples are analogous to the case at hand where the marks differ by only one of their letters in the middle of the mark.

 

Finally, Applicant asserts that there are “differences in the recited goods” but put forth no further statement, argument, or evidence to support this claim. As clearly demonstrated by the previously attached evidence and the evidence now attached herein, the parties’ goods are identical in part and otherwise overlapping and highly related.

 

Conclusion

 

For the foregoing reasons, the refusal to register applied-for mark pursuant to Section 2(d) of the Trademark Act is MAINTAINED and made FINAL.

 

Although Applicant’s mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

HOW TO RESPOND

 

Click to file a request for reconsideration of this final Office action that fully resolves the outstanding refusal and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fees.

 

ASSISTANCE

 

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 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.  

 

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@uspto.gov

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or Notice of Appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect Applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 26, 2019 for

U.S. Trademark Application Serial No. 88490916

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Samantha Sherman

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 26, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”