United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88515302
Mark: SCENT-A-PAK
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Correspondence Address: |
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Applicant: Scentisphere LLC
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Reference/Docket No. SCEN0450US
Correspondence Email Address: |
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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: February 10, 2020
This Office action is in response to applicant’s communication filed on January 15, 2020.
In a previous Office action dated August 5, 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: amend the identification of goods and, if applicable, satisfy multiple-class application requirements.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirements 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
The applicant seeks registration of the mark SCENT-A-PAK in standard characters for use in connection with, as amended, “scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope” in International Class 16.
The mark in Registration No. 1589621 is SCENT-A-BEAD in standard characters for use in connection with “Dispensable scented, plastic beads for use as sachet” in International Class 3.
The mark in Registration No. 4716656 is SCENT-A-GIFT in standard characters for use in connection with “Fragrance warmers and incense holders, namely, fragrance oil burners and incense burners” in International Class 21.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the 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).
Again, the applied-for mark is SCENT-A-PAK. The mark in Registration No. 1589621 is SCENT-A-BEAD, and the mark in Registration No. 4716656 is SCENT-A-GIFT. Neither the applied-for nor registered marks present with any form of design or stylization, leaving the comparison of the marks to their respective wordings alone.
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).
As noted in the initial Office action from August 2019, the applied-for mark and both registered marks begin with the terms “SCENT-A-”. 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).
Further, these wordings are the first in each of the respective marks, which renders them dominant in the minds of consumers. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also 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”).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Thus, the marks share the dominant portions of their wordings and so commercial impressions.
The applicant Response from January 5, 2020, contends that the compared marks differ in appearance, spelling, sound, and connotation because, although each mark begins with the term “SCENT” as a prefix, that term is no more dominant in the respective marks than their concluding terms. First, the Response notes the term “SCENT” is descriptive of scented products. Second, the Response notes that the owner of the application also is the owner of U.S. Registration Nos. 3595967 for SCENT-A-PEEL for use on pre-scented cards for sampling fragrances, and 3908708 for SCENT-A-COAT for use on coating used in the manufacture of pre-scented strips, sheets, and cards for sampling fragrances. As such, the Response contends, the concluding terms in the compared marks, “PAK”, “BEAD”, and “GIFT”, are no less dominant than the shared term “SCENT”.
First, the similarities already noted are not restricted simply to the term “SCENT”. Rather, the compared marks share the initial term “SCENT”, the term “A”, and the presentation of these terms separated by a hyphen. The marks begin with the same terms and presentation of those terms, “SCENT-A-”. Thus, while consumers may recognize the differences between “SCENT-A-PAK” and the registered marks, “SCENT-A-BEAD” and “SCENT-A-GIFT”, based solely on the concluding, singular terms, “PAK”, “BEAD”, and “GIFT”, consumers may nonetheless continue to mistakenly conclude due to the overall similarities in these marks that the applied-for mark constitutes no more than an additional product line from the same source as the goods in the registrations. E.g. In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985) (the addition of a house mark in the mark “LE CACHET De DIOR” did not avoid likelihood of confusion with the registered mark “CACHET”).
The second portion of the Response’s argument supports this conclusion, as the applicant claims ownership of the marks in Registration Nos. 3595967 and 3908708 for the marks SCENT-A-PEEL and SCENT-A-COAT, respectively. The applied-for mark appears merely as a variation of the applicant’s prior, registered marks that share “SCENT-A-” for differing product lines from the same source, terms that are shared with the registered marks cited in this and the prior Office action. In short, the compared marks carry the same commercial impression, and this line of argument is unprevailing.
Therefore, when viewed as a whole, the applicant’s mark is substantially similar in appearance, sound, connotation, and commercial impression to the registered marks.
Comparison of the Goods.
The applicant’s Response amended the identification to “scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope.” However, that amendment to the identification does not undermine the analysis of the relatedness of the goods of the respective parties. The language in the application’s amended identification, while not entirely clear as to the nature of the goods, may refer to a sealed package acting as a fragranced sachet or even to a fragranced reed. Attachments 1-2.
Registration No. 4716656 identifies “Fragrance warmers and incense holders, namely, fragrance oil burners and incense burners.”
As the prior Office action indicates per the evidence it attaches, which is incorporated herein by reference, Registration No. 1589621 identifies scented beads for use as a sachet, where a “sachet” refers to a small perfumed bag or packet and thus constitutes a container. See previously attached evidence. As a result, the application’s identification of “scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope” encompasses the registration’s identified goods, as the amended identification may very well refer to a sachet by the definition of that term.
For the above reasons, the application uses broad wording to describe “scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope,” which presumably encompasses all goods of the type described, including the registrants’ more narrowly defined “dispensable scented, plastic beads for use as sachet.” 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 respective registrants’ 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)). Further, as previously indicated, the language in the application’s amended identification, while not entirely clear as to the nature of the goods, may refer to a sealed package acting as a sachet emitting the scent of the product it accompanies. As such, although the applicant and registrant in Registration No. 1589621 do not employ the same language, both may nonetheless refer to identical goods.
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, the applicant’s and registrant’s goods are related.
Because applicant and the registrants’ marks are similar and goods related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. Accordingly, the applicant’s mark creates a likelihood of confusion with the registered marks, and registration is properly refused on the Principal Register under Section 2(d).
The applicant’s Response from January 2020 amended the identification to “scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope.” However, that amendment fails to resolve the above issue. In short, the identification remains unclear as to what the goods are. Read in its broadest sense, the language may refer to “scent emitting container, namely, an insert made of plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil” intended for placement into a package with a scented product. As noted in the above refusal, such language may refer to goods such as sachets or even pre-fragranced reeds. Thus, sufficient clarification was not provided. As a result, the identification also is overbroad, where the wording is unclear as to what aspect of the identified goods require classification in International Class 16 unless referring to textile goods like “Scented drawer liners” or “Scented facial tissue.”
Applicant may adopt the following wording (with additional wording bolded), if accurate:
CLASS 3: Scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope, namely, fragrance sachets
CLASS 16: Scent emitting container, namely, an insert made of a plant based material, plastic material, nonwoven fabric or foam material infused with fragrance oil for placement into a package containing a scented product in a sealed envelope for enabling the scent of the product to be experienced when the package is opened without opening the seal on the product envelope, namely, _____ [applicant must indicate a type of goods by common commercial or generic name in International Class 16]
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jeffrey Oakes/
Trademark Examining Attorney
Law Office 128
U.S. Patent and Trademark Office
(571) 272-8653
Jeffrey.Oakes@uspto.gov
RESPONSE GUIDANCE
