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. 88676614
Mark: DNA
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Correspondence Address:
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Applicant: Evolv, LLC
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Reference/Docket No. 137997.0023
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: November 29, 2019
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
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4673836, 5420810 and 5420811. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations (“Exhibit A”).
The applied-for mark is “DNA” in standard characters for “Electronic cigarettes; oral vaporizers for smokers; oral vaporizers for smoking purposes” in International Class 34.
The registered mark in U.S. Registration No. 4673836 is “DNA VAPOR” in standard characters for “Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges” in International Class 34.
The registered marks in U.S. Registration Nos. 5420810 and 5420811 are “VAPORDNA” in standard characters and with design for “Electronic cigarettes; Electronic cigarette refill cartridges sold empty; electronic cigarettes for use as an alternative to traditional cigarettes; cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; electronic cigarette drip tips” in International Class 34 and “Computerized on-line retail store services in the field of electronic cigarettes; computerized on-line retail store services in the field of electronic cigarettes and electronic cigarette accessories; on-line retail store services featuring electronic cigarette liquids, electronic cigarettes atomizers; retail electronic cigarette stores; retail electronic cigarette and electronic cigarette accessories store” in International Class 35.
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).
In this instance, the registered marks “DNA VAPOR” and “VAPORDNA” encompasses the entirety of the applied-for mark “DNA”. 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 “VAPOR” in the registered marks does not obviate the likelihood of confusion. The term “VAPOR” is descriptive of the registrants’ goods as “VAPOR” is commonly used in the context of smoking products to identify smoking products, such as oral vaporizers and electronic cigarettes, that produce vapor (“Exhibit B”). In fact, the registrant in U.S. Registration No. 4673836 has disclaimed this term as descriptive of its goods. Matter that is descriptive of a party’s goods and services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015). Thus, consumers are likely to instead perceive the shared term “DNA” as the source-indicating matter in the registered marks, which is identical to the entirety of the applied-for mark.
Based on the foregoing, the applied-for mark and registered marks are sufficiently similar to find a likelihood of confusion.
Comparison of Goods and Services
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 identification of goods in the application and U.S. Registration Nos. 5420810 and 5420811 are identical as to “electronic cigarettes”. In addition, the goods and services 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).
Furthermore, U.S. Registration Nos. 5420810 and 5420811 use broad wording to describe the goods featured by its retail store services, such as “electronic cigarettes” and “electronic cigarette accessories”. This wording is presumed to encompass all goods of the type described and, thus, the goods featured by the registrant’s retail store services would include the goods of the applicant. 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 Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
In addition, the goods and services at issue commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from manufacturers and retailers of electronic cigarettes (“Exhibit B”). This evidence establishes that the same entity commonly manufactures electronic cigarettes, oral vaporizers, and chemical flavorings therefor as well as provides online retail store services featuring those goods under the same mark and these goods and services are provided through the same trade channels and for the same classes of consumers. For example, Vaporfi® manufactures electronic cigarettes, oral vaporizer and chemical flavoring liquids and provides online retail store services featuring these products.
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.
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDANCE
