To: | Fairhaven Health, LLC (ms@schachtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88871823 - SAGE - T219898 |
Sent: | July 10, 2020 01:44:02 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88871823
Mark: SAGE
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Correspondence Address: |
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Applicant: Fairhaven Health, LLC
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Reference/Docket No. T219898
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: July 10, 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.
1. 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. 5934799 and 5923708. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF MARKS
The applicant has applied for the mark “SAGE” and the cited registrations are for the marks “SAJE” in standard character and “SAJE” in stylized lettering.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
COMPARISON OF GOODS
The applicant has identified the goods “vaginal moisturizer and lubricant for menopausal women” and the cited registration identified “Medicated skin care preparations containing herbs and essential oils for the treatment of skin conditions, namely, eczema, psoriasis, acne, skin irritations, rashes, itching, wounds, cuts and bruises and other minor skin ailments; herbal teas for medicinal purposes; dietary supplements, namely, herbal tinctures for the treatment of allergies, cold and flu, sore throat, stress, fatigue, headaches, migraines, muscular tension and pain, and for aiding digestion, cleansing, energy, hormonal balance, memory, concentration, sleep, and relaxation; shoulder and back wraps to soothe muscles; Essential oils and essential oil blends for personal use; non-medicated skin care preparations; skin soaps; shaving preparations; hair care preparations; bath and body products, namely, bath salts, bath crystals, bath oils, massage oils, personal deodorants; fragrances; scented room sprays; breath mints for use as a breath freshener; kits comprising some or all of the aforesaid goods being essential oils and essential oil blends for personal use, non-medicated skin care preparations, skin soaps, shaving preparations, hair care preparations, bath and body products being bath salts, bath crystals, bath oils, massage oils, personal deodorants, as well as fragrances, scented room sprays, and breath mints for use as a breath freshener; breath freshening sprays; home cleaning products, namely, all purpose cleaning preparations; essential oil based blends and sprays for the treatment of allergies, cold and flu, sore throat, stress, fatigue, headaches, migraines, muscular tension and pain, and for aiding digestion, cleansing, energy, hormonal balance, memory, concentration, sleep, and relaxation; non-medicated skin care preparations containing herbs and essential oils for the treatment of skin conditions, namely, eczema, psoriasis, acne, skin irritations, rashes, itching, wounds, cuts and bruises and other minor skin ailments; kits comprising some or all of the aforesaid goods being essential oil based blends and sprays for the treatment of allergies, cold and flu, sore throat, stress, fatigue, headaches, migraines, muscular tension and pain, and for aiding digestion, cleansing, energy, hormonal balance, memory, concentration, sleep and relaxation; essential oils used as dietary supplements for the treatment of allergies, cold and flu, sore throat, stress, fatigue, headaches, migraines, muscular tension and pain, and for aiding digestion, cleansing, energy, hormonal balance, memory, concentration, sleep, and relaxation; eye masks to soothe tired, puffy and dry eyes”.
In this case, the registrations use broad wording to describe Medicated skin care preparations, and non-medicated skin care preparations which presumably encompasses all goods of the type described, including applicant’s more narrow vaginal moisturizer and lubricant for menopausal women. 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)).
Additionally, the goods and/or 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) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
In this case the proposed mark gives a highly similar commercial impression to the cited registration and the goods/services are very closely related. There is a strong likelihood of confusion under Section 2 (d) of the Trademark Act.
2. PRIOR PENDING 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.
3. INFORMATION ABOUT GOODS REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
4. EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording “SAGE” in the mark has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
How to respond. Click to file a response to this nonfinal Office action.
/Matthew J. McDowell/
Examining Attorney
Law Office 101
United States Patent and Trademark Office
(571) 272-8263
matthew.mcdowell@uspto.gov
RESPONSE GUIDANCE