United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88657515
Mark: RELIEF
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Correspondence Address:
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Applicant: SKIN ALCHEMY LLC
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Reference/Docket No. H19-4222
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 issues 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 “RELIEF” in stylized form for “Non-medicated acne care preparations” in International Class 3.
The registered mark is “THERAPEUTIC RELIEF” in standard characters for “Acne medications; Bath preparations for medical purposes; Gels, creams and solutions for dermatological use; Medicated balms for treatment of skin; Medicated bath preparations; Medicated cosmetics; Medicated diaper rash ointments and lotions; Medicated hair care preparations; Medicated hand wash; Medicated lotions for face and body; Medicated skin care preparations; Medicated skin preparation for use in treating eczema, diaper rash, sunburn; Medicated sunburn ointments; Medicinal creams for skin care; Non-medicated, therapeutic skin creams for the treatment of eczema, sunburn; Therapeutic medicated bath preparations” in International Class 5.
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); 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).
In this instance, the registered mark “THERAPEUTIC RELIEF” encompasses the entirety of the applied-for mark “RELIEF”. 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 absence of the term “THERAPEUTIC” from the applied-for mark does not obviate 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).
Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.
Comparison of Goods
Here, the goods are similar in nature and purpose as both are designed to be used in the treatment and care of acne. In addition, the goods at issue commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from manufacturers of acne care and treatment preparations (“Exhibit B”). This establishes that the same entity, such as Proactiv®, commonly produces skin cleansers and acne treatments under the same mark, which are marketed and sold through the same trade channels and to the same classes of consumers for the alleviation of acne conditions.
Therefore, the goods of the applicant and registrant 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 mark are similar and the goods are related, registration is refused for a likelihood of confusion under Section 2(d).
Applicant should note the following additional ground for refusal.
Registration Refused – Section 2(e)(1) Merely Descriptive
The applied mark is “RELIEF” in stylized form for “Non-medicated acne care preparations” in International Class 3.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, the applicant’s mark is merely descriptive of its goods. The Oxford University Press® defines “RELIEF” as the alleviation of pain or discomfort (“Exhibit C”). In the context of the applicant’s goods, this term describes a purpose thereof, namely, to alleviate pain and discomfort associated with acne. The descriptive nature of this term is further demonstrated by other producers of acne care preparations, which use the term “RELIEF” to describe the preparations’ purpose and function in ameliorating acne (“Exhibit D”).
The applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).
Therefore, the applied-for mark is merely descriptive of the applicant’s goods and registration is refused under Section 2(e)(1).
Advisory: Supplemental Register
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Prior-Filed Applications
The filing dates of pending U.S. Application Serial Nos. 88359405 and 88478409 precede applicant’s filing date. See attached referenced applications (“Exhibit E”). If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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. However, the applicant must address the other issues raised in this Office action.
Identification and Classification of Goods
Applicant may adopt the following identification of goods, if accurate. The examining attorney has bolded and underlined additions to the applicant’s original identification of goods.
Class 003: Non-medicated facial cleaning preparations, namely, salicylic acne cleanser and skin moisturizers not for medical purposes
Class 005: Non-medicated acne treatment preparations
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.
Multi-Class Application Requirements
The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for International Class 3; and applicant needs a specimen for International Class 5. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Plus application through TEAS is $225 per class. See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04. See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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 refusals and requirements 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.
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDANCE