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:  December 18, 2019

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:

• Section 2(d) Refusal – Likelihood of Confusion
• Section 2(d) Advisory – Prior-Filed Application
• Identification of Goods

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5897966 & 5320150.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

Applicant’s mark is MOXIE in standard characters for “Lotions for face and body care; Body lotions; Skin lotions; Hand lotions; Bar soap; Bath soaps in liquid, solid or gel form; Cream soaps; Hand soaps; Liquid soaps; Hair conditioner; Hair shampoo; Non-medicated skin care creams and lotions; Non-medicated skin creams with essential oils for use in aromatherapy; Essential oils; Essential oils for aromatherapy use; Essential oils for flavoring beverages; Essential oils for food flavorings; Essential oils for household use; Essential oils for personal use; Aromatic essential oils; Skin care preparations, namely, body balm; Non-medicated herbal body care products, namely, body oils, salves, and lip balms; Face and body creams; Topical herbal extracts for cosmetic purposes; Skin and body topical lotions, creams and oils for cosmetic use; All of the foregoing containing hemp-derived Cannabidiol (CBD) with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis obtained from an authorized source under the 2018 Farm Bill” in Class 3.

Registrants’ marks are MOXE in stylized letters with a line over the letter “e” for, in relevant part, “essential oils for use in aromatherapy vaporizers and battery powered portable vaporizing units in the nature of electronic handheld vaporizers, essential oils for topical use” in Class 3, and MOXXIE over a circle and swirl design for “Bar soap; Body cream; Body scrub; Body sprays; Lip balm; Reeds and scented oils sold as a unit for use in room scent diffusers; Scented oils; Shower gel; Scented room sprays; Skin care preparations, namely, body balm” in Class 3.

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).

In this case, applicant’s mark is MOXIE in standard characters, and registrants’ marks are MOXE in stylized letters with a line over the letter “e,” and MOXXIE over a circle and swirl design.

Both of registrants’ marks are creative misspellings of the term in applicant’s mark, “moxie,” meaning “energy” or “pep.”  See http://www.merriam-webster.com/dictionary/moxe (suggesting “moxie” as the first option); http://www.merriam-webster.com/dictionary/moxxie (suggesting “moxie” as the first option); http://www.merriam-webster.com/dictionary/moxie (defining “moxie”).  Thus, even with slight differences in appearance, the marks are going to be pronounced identically, and have the same overall commercial impression.

The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

In addition, consumer confusion has been held likely for marks that do not physically look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning.  Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products); see In re M. Serman & Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be confused with BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125, 128 (TTAB 1978) (holding TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned tuna); Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (holding UPTOWNER for motor inn and restaurant services likely to be confused with DOWNTOWNER for the same services); TMEP §1207.01(b).

Finally, the registrations in question contain slight stylization or designs.  However, the wording in each mark is the more dominant portion of each of the marks to consider in a likelihood of confusion analysis.  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)).

Therefore, the marks are confusingly similar.

Comparison of the Goods

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, applicant’s goods are “Lotions for face and body care; Body lotions; Skin lotions; Hand lotions; Bar soap; Bath soaps in liquid, solid or gel form; Cream soaps; Hand soaps; Liquid soaps; Hair conditioner; Hair shampoo; Non-medicated skin care creams and lotions; Non-medicated skin creams with essential oils for use in aromatherapy; Essential oils; Essential oils for aromatherapy use; Essential oils for flavoring beverages; Essential oils for food flavorings; Essential oils for household use; Essential oils for personal use; Aromatic essential oils; Skin care preparations, namely, body balm; Non-medicated herbal body care products, namely, body oils, salves, and lip balms; Face and body creams; Topical herbal extracts for cosmetic purposes; Skin and body topical lotions, creams and oils for cosmetic use; All of the foregoing containing hemp-derived Cannabidiol (CBD) with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis obtained from an authorized source under the 2018 Farm Bill” in Class 3.

Registrants’ goods are, in relevant part, “essential oils for use in aromatherapy vaporizers and battery powered portable vaporizing units in the nature of electronic handheld vaporizers, essential oils for topical use” in Class 3, and “Bar soap; Body cream; Body scrub; Body sprays; Lip balm; Reeds and scented oils sold as a unit for use in room scent diffusers; Scented oils; Shower gel; Scented room sprays; Skin care preparations, namely, body balm” in Class 3, respectively.

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

As to registration MOXE, the application uses broad wording to describe essential oils, which presumably encompasses all goods of the type described, including registrant’s more narrow essential oils for use in aromatherapy and for topical use.  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 registrant’s 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)).  This is especially true considering that registrant’s goods are not limited in trade channels or by the classes of consumers that may purchase the goods, meaning they could purchase both applicant’s limited oils containing less than .03% delta THC and registrant’s oils of any variety.  Thus, applicant’s and registrant’s goods are related.

As to registration MOXXIE, the registration uses broad wording to describe bar soap, body cream, lip balm, scented oils, and body balm, which presumably encompasses all goods of the type described, including applicant’s more narrow goods that are identical to those listed above, but which contain less than .03% delta THC.  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 registrant’s 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)).  Thus, applicant’s and registrant’s goods are related.

Considering all of the above, applicant’s mark is refused registration due to a likelihood of confusion with registrants’ marks under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

SECTION 2(d) ADVISORY – PRIOR-FILED APPLICATION

The filing date of pending U.S. Application Serial No. 88606069 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application 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 application.

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 mark in the referenced application.  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.

IDENTIFICATION OF GOODS

The identification of goods contains wording that is overly-broad and indefinite and must be amended.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  Specifically, the wording “hand soaps” and “liquid soaps” must be clarified as to their nature.  For example, applicant may clarify that both kinds of soaps are non-medicated soaps in Class 3.  Applicant should note that if the soaps are clarified as being medicated, antibacterial, or for disinfecting purposes that the goods may be refused as being unlawful goods in commerce given that they contain hemp-derived cannabidiol.

The applicant may adopt the following, if accurate:

Class 3:           Lotions for face and body care; Body lotions; Skin lotions; Hand lotions; Bar soap; Bath soaps in liquid, solid or gel form; Cream soaps; Non-medicated hand soaps; Non-medicated liquid soaps; Hair conditioner; Hair shampoo; Non-medicated skin care creams and lotions; Non-medicated skin creams with essential oils for use in aromatherapy; Essential oils; Essential oils for aromatherapy use; Essential oils for flavoring beverages; Essential oils for food flavorings; Essential oils for household use; Essential oils for personal use; Aromatic essential oils; Skin care preparations, namely, body balm; Non-medicated herbal body care products, namely, body oils, salves, and lip balms; Face and body creams; Topical herbal extracts for cosmetic purposes; Skin and body topical lotions, creams and oils for cosmetic use; All of the foregoing containing hemp-derived Cannabidiol (CBD) with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis obtained from an authorized source under the 2018 Farm Bill

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

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.

RESPONSE GUIDELINES 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

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.    

/Caile Reid/

Caile Reid

Examining Attorney

Law Office 123

(571) 270-0764

caile.reid@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 December 18, 2019 for

U.S. Trademark Application Serial No. 88645339

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. 

/Caile Reid/

Caile Reid

Examining Attorney

Law Office 123

(571) 270-0764

caile.reid@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 December 18, 2019, 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.”