To: | Brandon S. Williams (mscott@mscottassociates.com) |
Subject: | U.S. Trademark Application Serial No. 88807266 - PERFECT PLATINUM PIXIE SEMINAR - N/A |
Sent: | May 19, 2020 11:55:45 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88807266
Mark: PERFECT PLATINUM PIXIE SEMINAR
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Correspondence Address:
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Applicant: Brandon S. Williams
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Reference/Docket No. N/A
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: May 19, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Likelihood of Confusion
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 and/or services. 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.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant’s mark is PERFECT PLATINUM PIXIE SEMINAR. Registrant’s mark is PIXI. Applicant’s mere addition of the wording PERFECT PLATINUM and SEMINAR to the phonetic term PIXIE is insufficient to obviate a refusal under Section 2(d).
In this case, applicant’s services “[e]ducational services, namely, providing seminars, demonstrations, panel discussions, classes, conferences, courses, and distribution of materials in the fields of hair salon services, hair cutting, styling, coloring, and hair extension services.”
Registrant’s services are “video education services, namely, production of videos in the fields of cosmetics and makeup application; Providing non-downloadable tutorials in the field of cosmetics and makeup application accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications and computer networks; Providing commentary in the field of cosmetics by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications and computer networks; Educational services, namely, providing instruction in the fields of cosmetics and makeup application accessible by means of radio, television, satellite, audio, video, web-based applications, mobile phone applications and computer networks.”
The services are closely related, namely, they both contain educational services in the field of cosmetic services.
Given the similarity of the marks and the closely related nature of the services, consumers are likely to be confused as to the source of the services. Consequently, registration is refused under Section 2(d).
Disclaimer
The attached evidence from http://www.merriam-webster.com/dictionary/platinum%20blonde shows the wording PLATINUM describes a hair color. As seen from applicant’s specimen of record, its services concern platinum blonde hair. As seen from applicant’s identification of services, it offers seminars.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PLATINUM” and “SEMINAR” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/alrademacher/
April L. Rademacher
Examining Attorney
USPTO
Law Office 108
571-270-3353
april.rademacher@uspto.gov
RESPONSE GUIDANCE