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:  January 15, 2020

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES

 

(1) Section 2(d) Likelihood of Confusion Refusal

(2) Prior Pending Applications

(3) Additional Information Required

 

SECTION 2(D) LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4853182.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant has applied to register the standard character mark RATIOECS for use in connection with “Dermatological pharmaceutical products; nutraceuticals for use as a dietary supplement; dietary supplements; topical analgesic creams; analgesic preparations; analgesic balms; pharmaceutical preparations for skin care; medicated facial cleansers; powdered nutritional supplement drink mix and concentrate; nutritional supplements; nutritional and dietary supplements formed and packaged as bars; pain relief medication; preparations for the relief of pain; nutritional supplements in the form of capsules; nutritional supplements in the form of powders; nutritional supplements in the form of oils; nutritional supplements in the form of syrups; nutritional supplements in the form of gummies; nutritional supplements in the form of gels; medicated lip balm; estrogen preparations; herbal tinctures for medical purposes; antibacterial cleaners; dietary supplements in liquid form; dietary supplements in powder form; dietary supplements in capsule form; medicinal preparations for the mouth and as sprays; dietary supplements in tablet form; dietary supplements in patch form” in International Class 5.

 

Registrant has registered the special form mark ECS EUROPEAN COSMETIC SYSTEM for use in connection with “Hair and scalp care products and preparations, namely, hair-washing shampoos, hair lotions, hair creams, cosmetic hair filling powders for covering bald and thinning spots on the scalp, hair-washing powder, hair styling preparations, lotions for skin, hair, body and hair waving, gels for hair sculpting, cosmetic creams, balms other than for medical use for use on hair, scalp and skin, bath foams, hair sprays, hair waxes, body powders, hair oils, non-medicated hair serums other than for medical use, hair care products, namely, hair-washing shampoos, hair gels, hair creams, pomades and hair waxes, beauty masks, hair colorants, hair de-colorants, hair waving and setting preparations, hair and beard dyes, decorative transfers for cosmetic use, cosmetic kits, namely, make-up kits comprised of body creams, beauty masks, cosmetics, bleaching preparations being decolorants for cosmetic use, make-up preparations, scented linen water, toilet water, hair sprays, products for straightening hair, namely, hair gels, hair creams, hair balms, after-shave lotions, perfumery products, namely, hair perfumes, perfumed powders for hair, perfumes, neutralizers for permanent waving, namely, permanent waving lotions, shaving stones being antiseptics, soaps, shampoos, hair conditioners, toiletries, stain removers, adhesives for affixing false hair, shaving products, namely, shaving foam, shaving balm, hair conditioning products, namely, permanent wave preparations, permanent wave lotions, cold permanent wave lotions, after permanent hair conditioning preparations; hair revitalizing products, namely, hair-strengthening serums and products to give hair volume, namely, hair-waving and curling preparations; styling grease and gel; styling mud as a hair-dressing product; lotions and sprays for the hair and scalp. liquid styling sprays; hair dyeing lotions; dyeing gels and foams for hair; essential oils and cosmetics” in International Class 3. Registrant disclaimed the wording “EUROPEAN COSMETIC SYSTEM”.

 

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.

 

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.

 

Similarity 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).

 

Here, applicant’s standard character mark RATIOECS, is confusingly similar to the registered special form mark ECS EUROPEAN COSMETIC SYSTEM. Specifically, both marks consist in significant part of the letters “ECS” in identical sequence. 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). Here, because both marks consist in significant part of the letters “ECS” in identical sequence, they are similar in terms of sound and appearance.

 

Although the registered mark includes wording not found in the applied-for mark (specifically, EUROPEAN COSMETIC SYSTEM), that fact does not obviate this refusal. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, registrant disclaimed the wording EUROPEAN COSMETIC SYSTEM. Accordingly, for purposes of Section 2(d) analysis, the dominant part of the registered mark is ECS compared with the applied-for mark RATIOECS.

 

Although the applied-for mark is a standard character mark while the registered mark is a special form mark, that fact does not obviate this refusal. First, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Second, 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)).

 

Ultimately, when purchasers call for the goods of the applicant and the goods of the registrant using marks that are very similar in sound, appearance and meaning, they are likely to believe that the marks identify a single source of goods. Thus, the marks are confusingly similar.

                       

Relatedness of the 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 and/or services] 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).

 

Applicant’s goods are identified as “Dermatological pharmaceutical products; nutraceuticals for use as a dietary supplement; dietary supplements; topical analgesic creams; analgesic preparations; analgesic balms; pharmaceutical preparations for skin care; medicated facial cleansers; powdered nutritional supplement drink mix and concentrate; nutritional supplements; nutritional and dietary supplements formed and packaged as bars; pain relief medication; preparations for the relief of pain; nutritional supplements in the form of capsules; nutritional supplements in the form of powders; nutritional supplements in the form of oils; nutritional supplements in the form of syrups; nutritional supplements in the form of gummies; nutritional supplements in the form of gels; medicated lip balm; estrogen preparations; herbal tinctures for medical purposes; antibacterial cleaners; dietary supplements in liquid form; dietary supplements in powder form; dietary supplements in capsule form; medicinal preparations for the mouth and as sprays; dietary supplements in tablet form; dietary supplements in patch form” in International Class 5.

 

Registrant’s goods are identified as “Hair and scalp care products and preparations, namely, hair-washing shampoos, hair lotions, hair creams, cosmetic hair filling powders for covering bald and thinning spots on the scalp, hair-washing powder, hair styling preparations, lotions for skin, hair, body and hair waving, gels for hair sculpting, cosmetic creams, balms other than for medical use for use on hair, scalp and skin, bath foams, hair sprays, hair waxes, body powders, hair oils, non-medicated hair serums other than for medical use, hair care products, namely, hair-washing shampoos, hair gels, hair creams, pomades and hair waxes, beauty masks, hair colorants, hair de-colorants, hair waving and setting preparations, hair and beard dyes, decorative transfers for cosmetic use, cosmetic kits, namely, make-up kits comprised of body creams, beauty masks, cosmetics, bleaching preparations being decolorants for cosmetic use, make-up preparations, scented linen water, toilet water, hair sprays, products for straightening hair, namely, hair gels, hair creams, hair balms, after-shave lotions, perfumery products, namely, hair perfumes, perfumed powders for hair, perfumes, neutralizers for permanent waving, namely, permanent waving lotions, shaving stones being antiseptics, soaps, shampoos, hair conditioners, toiletries, stain removers, adhesives for affixing false hair, shaving products, namely, shaving foam, shaving balm, hair conditioning products, namely, permanent wave preparations, permanent wave lotions, cold permanent wave lotions, after permanent hair conditioning preparations; hair revitalizing products, namely, hair-strengthening serums and products to give hair volume, namely, hair-waving and curling preparations; styling grease and gel; styling mud as a hair-dressing product; lotions and sprays for the hair and scalp. liquid styling sprays; hair dyeing lotions; dyeing gels and foams for hair; essential oils and cosmetics” in International Class 3.

 

The attached Internet evidence, consisting of screenshots from TheOuai.com, US.Caudalie, and KloraneUSA.com, establishes that the same entity (here, Ouai, Caudalie, and Klorane) commonly provides the relevant goods and markets the goods under the same mark.  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).

 

The refusal applies to all of the applicant’s goods because all of the remaining goods identified by the applicant are similar in nature to those for which evidence has been provided and are generally sold in the same category and under the same mark.

 

Ultimately, when purchasers encounter the applicant’s goods and the registrant’s goods, they are likely to be confused as to the source of goods by the relationship between them. Thus, the goods are related.

 

Therefore, because the marks are confusingly similar and the goods are related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Response to Section 2(d) – Likelihood of Confusion Refusal

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

PRIOR PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88637737, 88263528, 88410692, 88304041, 88604747, 88493045, 88460030, 88191791, and 88155435 precede applicant’s filing date. See attached referenced applications. If the mark in any of the referenced applications registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

While applicant is not required to respond to the issue of the pending applications, applicant must respond to the refusal above and the requirement below within six months of the mailing date of this Office Action to avoid abandonment.

 

ADDITIONAL INFORMATION REQUIRED

 

To permit proper examination of the application, applicant must explain whether the wording “ECS,” “RATIO ECS,” “RATIOECS,” and/or “RATIO X” has any significance in the applicant’s trade or industry or as applied to applicant’s goods, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

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.    

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@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 January 15, 2020 for

U.S. Trademark Application Serial No. 88641538

 

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. 

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@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 January 15, 2020, 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.”