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. 88657500
Mark: STAG
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Correspondence Address:
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Applicant: SKIN ALCHEMY LLC
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Reference/Docket No. H19-4220
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: January 22, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Registration Refused – Section 2(d) Likelihood of Confusion
The applied-for mark is “STAG” in stylized form for “Facial moisturizers” in International Class 3.
The registered mark in U.S. Registration No. 4767657 is “STAG PROVISIONS FOR MEN” for “Retail store services featuring clothing; Retail store services featuring clothing accessories, shoes, belts, books, stationery, housewares, toiletries, luggage, jewelry, watches, wallets, candles, and knives; Retail store services featuring a wide variety of consumer goods; On-line retail store services featuring clothing; On-line retail store services featuring clothing accessories, shoes, belts, books, stationery, housewares, toiletries, luggage, jewelry, watches, wallets, candles, and knives; On-line retail store services featuring a wide variety of consumer goods” in International Class 35.
The registered mark in U.S. Registration No. 4788685 is “STAG SHOP” in standard characters for “Online retail store services featuring adult videos, lingerie, shoes, lotions and oils, novelty items, namely, vibrators, massagers, and sexual aids, magazines, adult sex toys, personal lubricants and condoms” in International Class 35.
The registered mark in U.S. Registration No. 5855127 is “THE NOBEL STAG” in standard characters for “Non-medicated men's skin care and grooming products, namely, beard oil, moisturizer, post shave balm, anti-aging serum and cream, and eye cream” in International Class 3.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
Comparison of 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); 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); TMEP §1207.01(b).
U.S. Registration Nos. 4767657 and 4788685
In this instance, the registered marks “STAG PROVISIONS FOR MEN” and “STAG SHOP” encompasses the entirety of the wording in the applied-for mark “STAG”. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The inclusion of the wording “PROVISIONS FOR MEN” and “SHOP” in the registered marks does not obviate the likelihood of confusion. Consumers are generally more inclined to focus on the first word 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”). The first term in the registered marks is the shared term “STAG”.
Based on the foregoing, the applied-for mark and registered marks are sufficiently similar to find a likelihood of confusion.
U.S. Registration No. 5855127
In this instance, the registered mark “THE NOBLE STAG” encompasses the entirety of the applied-for mark “STAG”. The absence of the wording “THE NOBLE” from the applied-for mark does not diminish the likelihood of confusion. Merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; TMEP §1207.01(b)(ii)-(iii). Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010).
Therefore, the applied-for and registered marks are sufficiently similar to find a likelihood of confusion.
Comparison of Goods and Services
The compared goods and services 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); TMEP §1207.01(a)(i). Instead, the respective goods and services 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 services] emanate from the same source.” 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007); TMEP §1207.01(a)(i).
The determination of likelihood of confusion is based on the description of the goods and services 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). Broad and unrestricted identifications are presumed to encompass all goods and services of the type described. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018).
Here, the applicant and registrant in U.S. Registration No. 5855127 use broad wording to identify their goods – “facial moisturizers” and non-medicated men’s skin moisturizers, respectively. This wording is presumed to encompass all goods of the type described and, thus, both the applicant and registrant’s goods would include non-medicated facial moisturizers for men. In addition, 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).
Similarly, the registrants in U.S. Registration Nos. 4767657 and 4788685 broadly identify the goods featured by their retail store services as “lotions and oils” and “toiletries”. This wording is also presumed encompass all goods of the type described, such as facial moisturizing lotions and body care products (“Exhibit B”). The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); TMEP §1207.01(a)(ii).
Furthermore, the goods and services at issue are related because the goods and services commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from producers of cosmetics (“Exhibit C”). This evidence establishes that the same entity, such as Lush® and Sephora®, commonly produce a wide variety of skin care lotions and toiletries, including skin moisturizers, body oils and lotions, and soap, as well as provide retail store services featuring those goods under the same mark.
Therefore, the goods and services of the applicant and registrants are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
Conclusion
Because the applicant’s applied-for mark and the registered marks are similar and the goods and services are related, registration is refused for a likelihood of confusion under Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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 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.
If the applicant has any questions or requires assistance in responding to this Office action, please telephone the assigned examining attorney.
/Thomas P. Young/
Examining Attorney
Law Office 120
thomas.young@uspto.gov
(571) 272-5152
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.
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RESPONSE GUIDANCE
