Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  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

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4691397.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The Applicant’s mark is GRASSE F and design for use with “3-in-1 hair shampoos; 3-in-1 organic non-medicated soap bars for use as soap, shampoo and conditioner; Body wash; Cosmetic balls; Cosmetic bath salts; Cosmetic body mud; Cosmetic cotton wool; Cosmetic creams; Cosmetic creams for skin care; Cosmetic facial blotting papers; Cosmetic hair dressing preparations; Cosmetic hand creams; Cosmetic masks; Cosmetic massage creams; Cosmetic milks; Cosmetic mud masks; Cosmetic nail preparations; Cosmetic nourishing creams; Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic pads; Cosmetic pencils; Cosmetic preparations; Cosmetic preparations against sunburn; Cosmetic preparations for baths; Cosmetic preparations for body care; Cosmetic preparations for eyelashes; Cosmetic preparations for nail drying; Cosmetic preparations for skin care; Cosmetic preparations for slimming purposes; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Cosmetic preparations, namely, skin balsams; Cosmetic rouges; Cosmetic skin fresheners; Cosmetic sun milk lotions; Cosmetic sun oils; Cosmetic sun-protecting preparations; Cosmetic sun-tanning preparations; Cosmetic sunscreen preparations; Cosmetic suntan lotions; Cosmetic suntan preparations; Cosmetic tanning preparations; Cosmetic white face powder; Cosmetics and cosmetic preparations; Deodorant for personal use; Deodorant soap; Deodorants and antiperspirants; Deodorants and antiperspirants for personal use; Deodorants for animals; Deodorants for body care; Deodorants for human beings; Deodorants for human beings or for animals; Deodorants for personal use; Deodorizers for pets; Essential oils; Essential oils as perfume for laundry purposes; Essential oils for aromatherapy use; Essential oils for flavoring beverages; Essential oils for flavoring tobacco; Essential oils for household use; Essential oils for personal use; Essential oils for use in the manufacture of scented products; Essential oils of cedarwood; Essential oils of citron; Essential oils of lemon; Essential oils, namely, pine oils; Essential vegetable oils; Flavorings for beverages being essential oils; Flavourings for beverages being essential oils; Fragrance emitting wicks for room fragrance; Fragrance sachets; Fragranced facial moisturizer; Fragrances; Fragrances and perfumery; Fragrances for automobiles; Fragrances for personal use; Laundry additives for water softening; Laundry balls containing laundry detergent; Laundry bleach; Laundry bleaching preparations; Laundry blueing; Laundry detergent; Laundry detergents; Laundry fabric conditioner; Laundry glaze; Laundry pre-soak; Laundry sizing; Laundry soap; Laundry starch; Laundry wax; Moisturising creams; Moisturizing body lotions; Moisturizing creams; Moisturizing milk; Moisturizing milks; Moisturizing preparations for the skin; Moisturizing solutions for the skin; Shampoo-conditioners; Shampoos; Shampoos for animals; Shampoos for babies; Shampoos for pets; Toilet bowl detergents; Toilet soap; Toilet soaps; Toilet water; Toilet water containing snake oil; Toilet waters; Adhesives for cosmetic purposes; Adhesives for cosmetic use; After sun moisturisers; Aftershave moisturising cream; Air fragrance reed diffusers; Air fragrancing preparations; All purpose cleaning preparation with deodorizing properties; Almond milk for cosmetic purposes; Anti-aging moisturizer; Anti-aging moisturizers used as cosmetics; Antiperspirants and deodorants for personal use; Argan oil for cosmetic purposes; Aromatic essential oils; Aromatic pillows comprising potpourri in fabric containers; Astringents for cosmetic purposes; Baby shampoo; Bath oils for cosmetic purposes; Bleaching preparations for cosmetic purposes; Bleaching preparations for laundry use; Blueing for laundry; Body deodorant in pill form; Body deodorants; Body spray used as a personal deodorant and as fragrance; Cake flavorings being essential oils; Cake flavourings being essential oils; Carpet shampoo; Carpet cleaners with deodorizer; Chalk for cosmetic use; Cleaner for cosmetic brushes; Cleansing creams; Cleansing milk for cosmetic purposes; Cleansing milk for toilet purposes; Cocoa butter for cosmetic purposes; Combination cleaner and deodorizer for litter boxes; Common toilet water; Cotton buds for cosmetic purposes; Cotton for cosmetic purposes; Douching preparations for personal sanitary or deodorant purposes; Dry shampoos; Electronic cigarette liquid (e-liquid) comprised of essential oils; Essential oils for food flavorings; Fabric softeners for laundry use; Face creams for cosmetic use; Facial moisturizer with SPF; Facial moisturizers; Feminine deodorant sprays; Feminine deodorant suppositories; Flower essences for cosmetic purposes; Food flavoring, being essential oils; Food flavorings prepared from essential oils; Foot deodorant spray; Gauze for cosmetic purposes; Gels for cosmetic purposes; Glitter for cosmetic purposes; Gloves impregnated with moisturizing preparations for the hands; Greases for cosmetic purposes; Gurjan balsam being essential oils for use in the manufacture of varnish; Hair shampoo; Hair shampoos and conditioners; Hair rinses; Henna for cosmetic purposes; Hydrogen peroxide for cosmetic purposes; Inhaler sold filled with essential oils for use in aromatherapy; Inhalers sold filled with essential oils, not for medical or therapeutic use; Liquid fragrance preparations for use in the water tanks of multi-purpose steam cleaning machines for household purposes; Liquid laundry detergents; Liquid soaps for laundry; Lotions for cosmetic purposes; Milk for cosmetic purposes; Mint essence being essential oil; Nail varnish for cosmetic purposes; Natural essential oils; Non-medicated cosmetic soap; Non-medicated dandruff shampoo; Non-medicated grooming preparations in the nature of shampoos for animals; Non-medicated skin creams with essential oils for use in aromatherapy; Non-medicated, non-veterinary grooming preparations in the nature of pet shampoo and conditioner; Nutritional oils for cosmetic purposes; Oils for cosmetic purposes; Paraffin wax for cosmetic purposes; Pencils for cosmetic purposes; Perfumery, essential oils; Perfumes and toilet waters; Personal deodorants; Pet fragrances; Pet shampoo; Pet shampoos; Pomades for cosmetic purposes; Powder laundry detergents; Pre-moistened cosmetic tissues; Pre-moistened cosmetic towelettes; Pre-moistened cosmetic wipes; Pre-scented strips and cards for sampling fragrances; Roller bottles sold filled with essential oils; Room fragrance refills for non-electric room fragrance dispensers; Room fragrances; Room fragrancing preparations; Rose oil for cosmetic purposes; Sachet-like eye pillows containing fragrances; Scent eliminating laundry detergent for use associated with hunting and outdoor recreation; Seaweed gelatine for laundry use (funori); Shaving spritz in the nature of a moisturizing solution for shaving; Skin moisturizer; Skin moisturizer masks; Skin moisturizers used as cosmetics; Skin moisturizing gel; Socks impregnated with moisturizing preparations for the feet; Spirit gum for cosmetic use; Starch for laundry purposes; Starch glaze for laundry purposes; Suntan oils for cosmetic purposes; Talcum powder; Talcum powder, for toilet use; Terpenes being essential oils; Vaginal washes for personal sanitary or deodorant purposes; Washing preparations and laundry bleach.” 

 

The registered mark is GRASSÉ for use with “hair shampoos and conditioners.”

 

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

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 similar because they share the term GRASSE.  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

The registered mark is entirely incorporated in to the applicant’s mark.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The Applicant’s mark adds a letter F to the registered mark.  Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The applicant’s mark includes a simple design of a square.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

COMPARISON OF GOODS/SERVICES

The goods and/or services 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).

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services 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)). 

 

In this case, the goods and/or services in the application and registration(s) are in part identical, e.g., hair shampoos and hair conditioners.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.  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)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

RESPONSES

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

Cheryl Clayton

/CCM/

Trademark Attorney

United States Patent and Trademark Office

571-272-9254 (direct)

cheryl.clayton@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 an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• 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 September 06, 2019 for

U.S. Trademark Application Serial No. 88491009

 

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. 

 

 

Cheryl Clayton

/CCM/

Trademark Attorney

United States Patent and Trademark Office

571-272-9254 (direct)

cheryl.clayton@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 September 06, 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.”