United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88566942
Mark: BIOSILK
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Correspondence Address:
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Applicant: Welex Laboratories Pvt. Ltd.,
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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: November 12, 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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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
The applied-for mark is BIOSILK for:
International Class 5: Medicinal herbal preparations; Herbal teas for medicinal purposes; Medicinal herbal extracts for medical purposes Medicinal herbal preparations, namely, ayurvedic preparations; Herbal supplements; Dietary Supplements; Medicinal herbal extracts and infusions; Liquid herbal supplements; Medicated herbal skin care preparations, namely, creams, lotions, and body sprays for external body use Herbal pills for the treatment of diabetes; Herbal extracts for medical purposes; Medicinal oils; Nutritional supplements; probiotic supplements; vitamin supplements; Medicinal preparations for the mouth in the form of drops, capsules, tablets or compressed tablets; Medicinal preparations for treating diabetes, kidney disorders, skin disorders, bacteria based diseases or disorders, autoimmune diseases or disorders, liver diseases or disorders; Dietary supplements for controlling cholesterol.
The registered mark, owned by Farouk Systems, are BIOSILK:
International Class 3: Skin care products, namely, non-medicated skin serum; Skin cleansers; Skin conditioners; Skin creams; Skin fresheners; Skin lotion; Skin lotions; Skin masks; Skin moisturizer; Skin moisturizer masks; Skin moisturizing gel; Skin toners; Cosmetic creams for skin care; Cosmetic preparations for skin care; Non-medicated skin care preparations; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin serums.
International Class 3: Hair care preparations; Hair shampoos and conditioners; Hair sprays and hair gels; Hair styling preparations
International Class 3: hair care preparations; namely, shampoos, conditioners, styling preparations, permanent wave lotions, and hair coloring preparations
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).
In the present case, applicant’s mark is BIOSILK and registrant’s mark is BIOSILK. These marks are identical in appearance, 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 OF THE GOODS
The marks identify herbal preparations/teas/pills/extracts/supplements, dietary supplements, nutritional supplements, probiotic supplements, vitamin supplements, medicinal preparations, and/or skincare preparations/ cosmetic preparations, or hair care products. The applied-for mark and U.S. Registration No. 5469711 both identify skin creams and lotions, and other body skin care products.
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 this case, all of the marks identify products used to care for the skin, hair, and/or body.
The attached and listed below Internet evidence, consisting of webpages of sources that provide supplements, preparations, cosmetics, hair care products, and/or skincare products establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark, and the relevant goods are sold or provided through the same trade channels. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Avon
http://www.avon.com/category/health-wellness
http://www.avon.com/category/skin-care
Herbalife
http://catalog.herbalife.com/Catalog/en-US/Skin-Hair-Care
http://catalog.herbalife.com/Catalog/en-US/Core-Products
Kora Organics
http://us.koraorganics.com/collections/all
http://us.koraorganics.com/collections/supplements
Perricone MD
http://www.perriconemd.com/pages/skincare
http://www.perriconemd.com/collections/supplements
Honest Company
http://www.honest.com/beauty-products/skincare
http://www.honest.com/beauty-products/hair-care
Mercola
http://articles.mercola.com/herbal-oils.aspx
http://articles.mercola.com/teas.aspx
http://articles.mercola.com/vitamins-supplements.aspx
http://search.mercola.com/results.aspx?q=shampoo
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.
The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods in the registration, the presumption is that the goods move in all trade channels normal for such goods and are available to all potential classes of ordinary consumers of such goods. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
IDENTIFICATION OF GOODS
Please see the acceptable definite wording in bold below suggested for indefinite wording.
Applicant may substitute the following wording, if accurate:
“Medicinal herbal preparations; Herbal teas for medicinal purposes; Medicinal herbal extracts for medical purposes; Medicinal herbal preparations, namely, ayurvedic preparations; Herbal supplements; Dietary Supplements; Medicinal herbal extracts for medical purposes; Medicinal herbal infusions for treating diabetes, kidney disorders, skin disorders, bacteria based diseases or disorders, autoimmune diseases or disorders, and liver diseases or disorders; Liquid herbal supplements; Medicated herbal skin care preparations, namely, medicated skin creams, skin lotions, and body sprays for external body use; Herbal pills for the treatment of diabetes; Herbal extracts for medical purposes; Medicinal oils; Nutritional supplements; probiotic supplements; vitamin supplements; Medicinal preparations for the mouth in the form of drops, capsules, tablets or compressed tablets; Medicinal preparations for treating diabetes, kidney disorders, skin disorders, bacteria based diseases or disorders, autoimmune diseases or disorders, liver diseases or disorders; Dietary supplements for controlling cholesterol” in International Class 5.
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.
UNSIGNED APPLICATION
The following statements must be verified: That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
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(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.
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. 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
/Carol Spils/
Trademark Examining Attorney
Law Office 104
(571)272-9226
carol.spils@uspto.gov
RESPONSE GUIDANCE