To: | American-Cigarette Company (Overseas) Li ETC. (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. Trademark Application Serial No. 90046018 - VOGUE - 1202105 |
Sent: | October 23, 2020 05:23:34 PM |
Sent As: | ecom115@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90046018
Mark: VOGUE
|
|
Correspondence Address: KILPATRICK TOWNSEND & STOCKTON LLP
|
|
Applicant: American-Cigarette Company (Overseas) Li ETC.
|
|
Reference/Docket No. 1202105
Correspondence Email Address: |
|
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: October 23, 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.
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5214678. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
In this case, applicant has applied to register VOGUE (and Design) for “Cigarettes; tobacco, raw and manufactured; roll your own tobacco; pipe tobacco; tobacco products, namely, smoking tobacco, cut tobacco, leaf tobacco, chewing tobacco, snuff tobacco, snus tobacco, pipe tobacco, and hand rolling tobacco; tobacco substitutes not for medical purposes; cigars; cigarillos; cigarette lighters; cigar lighters; matches; smokers' articles, namely, filter tubes, cigar relighting liquid solution, cigarette lighters not of precious metal, matches, ashtrays not of precious metal, pipes, cigarette holders, humidors, cigar cutters, tobacco pouches, pocket machines for rolling cigarettes; cigarette paper; cigarette tubes; cigarette filters; pocket apparatus for rolling cigarettes; hand held machines for injecting tobacco into paper tubes; electronic cigarettes; liquids for e-cigarettes, namely, liquid nicotine solutions for use in electronic cigarettes; tobacco products for the purpose of being heated, namely, sticks of tobacco and sticks of tobacco substitutes that are designed to be heated but not burned.”
Registrant’s mark is VOGUE VAPORS (Standard Characters) for “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of propylene glycol; Electronic cigarette liquid (e-liquid) comprised of vegetable glycerin.”
Comparison of the 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) (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).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In this case, the marks contain the same dominant wording, namely, “VOGUE.” The literal portion of applicant’s mark consists solely of the word “VOGUE”; registrant’s mark consists of the word “VOGUE” followed by the descriptive wording “VAPORS,” which has been disclaimed. Because of this common wording, the marks are highly similar in sound, appearance, and overall commercial impression. Attached is an excerpt from http://www.ahdictionary.com/word/search.html?q=vogue with the definition of “vogue.”
Relatedness of the Goods
In this case, registrant’s goods are liquids specifically designed for use in electronic cigarettes – “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of propylene glycol; Electronic cigarette liquid (e-liquid) comprised of vegetable glycerin.” Applicant’s goods include “liquids for e-cigarettes, namely, liquid nicotine solutions for use in electronic cigarettes.” Although the electronic cigarette liquids do not have identical ingredients, the liquids are used “by the same purchasers for the same or related purposes.” Moreover, applicant’s goods also include “electronic cigarettes.” Registrant’s e-liquids are specifically designed to be used in electronic cigarettes. Applicant’s electronic cigarettes and registrant’s e-liquids are “often used together or otherwise purchased by the same purchasers for the same or related purposes.”
With respect to a comparison of applicant’s traditional cigarette and tobacco products and accessories and registrant’s e-liquids, the attached Internet evidence, consisting of representative website excerpts from retailers that sell both e-liquids (registrant) and cigarette and tobacco products and accessories (applicant), establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Summary of the Refusal
The marks contain the same dominant wording and are highly similar in sound, appearance, and overall commercial impression. The goods are related. The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
1. Identification of Goods
a. The wording “pipes” in the identification of goods is indefinite and must be clarified because the specific type(s) of “pipes” has not been indicated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “tobacco pipes.”
b. The wording “hand held machines for injecting tobacco into paper tubes” in the identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “hand-held machines for injecting tobacco into paper cigarette tubes.”
c. Applicant must clarify the identification of goods by indicating the purpose or use of the “tobacco products for the purpose of being heated, namely, sticks of tobacco and sticks of tobacco substitutes that are designed to be heated but not burned.” See TMEP §1402.01. Applicant may substitute the following wording, if accurate: tobacco products for the purpose of being heated, namely, sticks of tobacco and sticks of tobacco substitutes that are designed to be heated but not burned for the purpose of inhalation
d. 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.
e. Applicant may adopt the following identification of goods in International Class 34, if accurate: Cigarettes; tobacco, raw and manufactured; roll your own tobacco; pipe tobacco; tobacco products, namely, smoking tobacco, cut tobacco, leaf tobacco, chewing tobacco, snuff tobacco, snus tobacco, pipe tobacco, and hand rolling tobacco; tobacco substitutes not for medical purposes; cigars; cigarillos; cigarette lighters; cigar lighters; matches; smokers' articles, namely, filter tubes, cigar relighting liquid solution, cigarette lighters not of precious metal, matches, ashtrays not of precious metal, tobacco pipes, cigarette holders, humidors, cigar cutters, tobacco pouches, pocket machines for rolling cigarettes; cigarette paper; cigarette tubes; cigarette filters; pocket apparatus for rolling cigarettes; hand-held machines for injecting tobacco into paper cigarette tubes; electronic cigarettes; liquids for e-cigarettes, namely, liquid nicotine solutions for use in electronic cigarettes; tobacco products for the purpose of being heated, namely, sticks of tobacco and sticks of tobacco substitutes that are designed to be heated but not burned for the purpose of inhalation. See TMEP §1402.01.
2. Mark Description
A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following mark description is suggested, if accurate:
The mark consists of a gray rectangular background. In the gray rectangular background is a light blue rectangle that contains the black stylized wording “VOGUE” and a green circle to the right of the word “VOGUE”.
How to respond. Click to file a response to this nonfinal Office action.
If applicant has any questions or needs assistance in responding to this Office action, please call or email the assigned examining attorney.
A prompt response to this Office action will expedite the handling of this matter.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.Gaynor@uspto.gov
RESPONSE GUIDANCE