To: | Hearst Communications, Inc. (trademarks@hearst.com) |
Subject: | U.S. Trademark Application Serial No. 88507551 - SQUEEZE THE MOMENT - 13907 |
Sent: | March 09, 2020 11:43:38 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88507551
Mark: SQUEEZE THE MOMENT
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Correspondence Address:
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Applicant: Hearst Communications, Inc.
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Reference/Docket No. 13907
Correspondence Email Address: |
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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: March 09, 2020
This application was previously suspended pending resolution of a potentially-conflicting prior-filed application. That application has since registered giving rise to this Office action.
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. 5957151. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark SQUEEZE THE MOMENT. Registrant’s mark is SQUEEZE THE DAY.
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). 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).
Both applicant and registrant’s marks begin with and prominently feature the wording SQUEEZE THE used in place of the words “seize the” in common phrases. Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a highly similar commercial impression of phrases beginning with “seize the” being replaced with the wording “squeeze the.”
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Goods
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).
In the present case, applicant has applied for the mark for use in connection with:
Class 3: PERFUME, EAU DE PARFUM, EAU DE TOILETTE, EAU DE COLOGNE; FRAGRANCED BODY CARE PREPARATIONS, NAMELY, BODY LOTIONS, BATH GELS, SHOWER GELS, BODY SCRUBS, BODY POWDERS, BODY SOUFFLÉS AND BODY MISTS
Registrant has registered the cited mark for use in connection with:
Class 3: Facial masks
The attached internet evidence from Fresh, Rael, and Farmhouse Fresh shows that the same source that offers facial masks like the goods identified by registrant commonly also offers body lotions, body mists, perfume, and other goods like the goods specified by applicant under the same mark. http://www.fresh.com/us/vitamin-nectar-glow-face-mask-H00004453.html; http://www.fresh.com/us/hesperides-grapefruit-body-lotion-H00001193.html; http://www.farmhousefreshgoods.com/illumination-fruit.html; http://www.farmhousefreshgoods.com/pink-moon-perfume.html; http://www.getrael.com/collections/moisturizers/products/calm-collected-moisture-mist; http://www.getrael.com/collections/sheet-mask/products/variety-set-20-masks-total.
Applicant and registrant’s goods are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's goods are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the goods of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with a registered mark, and registration is properly refused on the Principal Register 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.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
Examining Attorney
Law Office 105
RESPONSE GUIDANCE