To: | Bliss Products Holdings LLC (Belagorudsky-Docket@fzlz.com) |
Subject: | U.S. Trademark Application Serial No. 88639191 - CLARITY 5 COMPLEX - BLSP 1912406 |
Sent: | December 21, 2019 05:56:06 PM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88639191
Mark: CLARITY 5 COMPLEX
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Correspondence Address: FROSS ZELNICK LEHRMAN & ZISSU, P.C. 151 W. 42ND STREET, 17TH FLOOR
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Applicant: Bliss Products Holdings LLC
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Reference/Docket No. BLSP 1912406
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: December 21, 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
HY+5 COMPLEX, in standard characters, for “Beauty creams; Beauty serums; Body and beauty care cosmetics; Body creams; Body wash; Cleansing creams; Cosmetic creams; Cosmetic preparations; Cosmetic preparations for protecting the skin from the sun's rays; Cosmetic preparations for skin care; Cosmetics; Eye cream; Eye lotions; Face and body beauty creams; Face and body creams; Face and body lotions; Facial moisturizers; Moisturizing creams; Non-medicated skin care creams and lotions; Non-medicated skin care preparations; Non-medicated sun care preparations; Skin and body topical lotions, creams and oils for cosmetic use; Skin creams; Skin moisturizer; Skin toners; Sun care lotions; Sun screen preparations” in Class 3 (U.S. Registration No. 5776032).
LBP-5 COMPLEX, in standard characters, for “Moisturizing preparations for the skin; non-medicated skin care preparations; all of the aforesaid goods made in substantial part of lyceum barbarum polysaccharides (LBP)” in Class 3 (U.S. Registration No. 4476067).
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
1. Similarity of the Marks
The applicant’s mark:
CLARITY 5 COMPLEX in standard characters.
The registrants’ marks:
HY+5 COMPLEX, in standard characters (U.S. Registration No. 5776032).
LBP-5 COMPLEX, in standard characters (U.S. Registration No. 4476067).
The dominant portion of the compared marks are similar in appearance and meaning because they all contain the wording “5 COMPLEX”. Comparing the literal word portions of the marks, the marks are similar except applicant’s mark contains the wording “5 COMPLEX” preceded by the term “CLARITY”, that is “CLARITY 5 COMPLEX”, whereas U.S. Registration No. 5776032 contains the wording “5 COMPLEX” preceded by “HY+”, that is “HY+5 COMPLEX”, and U.S. Registration No. 4476067 contains the wording “5 COMPLEX” preceded by “LBP”, that is “LBP-5 COMPLEX”. Thus, the dominant portion of the compared marks are similar and create the same overall commercial impression and the marks are thus confusingly similar for the purposes of determining likelihood of confusion.
Thus, the marks convey the same commercial impression and are substantially similar in this comparison. Consumers are likely to be confused as to the source of the origin of the goods and the marks are similar. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Therefore, the marks are confusingly similar.
2. Relatedness of the Goods
The applicant’s goods are:
Class 3: Non-medicated skin care preparations.
The registrants’ goods are:
Class 3: Beauty creams; Beauty serums; Body and beauty care cosmetics; Body creams; Body wash; Cleansing creams; Cosmetic creams; Cosmetic preparations; Cosmetic preparations for protecting the skin from the sun's rays; Cosmetic preparations for skin care; Cosmetics; Eye cream; Eye lotions; Face and body beauty creams; Face and body creams; Face and body lotions; Facial moisturizers; Moisturizing creams; Non-medicated skin care creams and lotions; Non-medicated skin care preparations; Non-medicated sun care preparations; Skin and body topical lotions, creams and oils for cosmetic use; Skin creams; Skin moisturizer; Skin toners; Sun care lotions; Sun screen preparations (U.S. Registration No. 5776032).
Class 3: Moisturizing preparations for the skin; non-medicated skin care preparations; all of the aforesaid goods made in substantial part of lyceum barbarum polysaccharides (LBP) (U.S. Registration No. 4476067).
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 stated 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 identical for “non-medicated skin care preparations”. 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.
Further, where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Thus, applicant’s and registrant’s goods and/or services 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).
In this case, applicant must disclaim the wording “COMPLEX” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence shows this wording means being made of various parts. See attached at http://ahdictionary.com/word/search.html?q=complex. Consumers will understand that “COMPLEX” in the mark indicates that the goods have a variety of ingredients (parts) that work together to create a whole. Thus, the wording merely describes applicant’s goods for “non-medicated skin care preparations”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “COMPLEX” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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 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 response to this nonfinal Office action.
/Carolyn Wlodarczyk/
Carolyn Wlodarczyk
Trademark Examining Attorney
Law Office 109
571-272-9273
carolyn.wlodarczyk@uspto.gov
RESPONSE GUIDANCE