Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  May 13, 2021

 

This Office action is in response to applicant’s communication filed on April 23, 2021.

 

Applicant (1) argued against the Section 2(d) likelihood of confusion refusal; (2) amended the identification of goods; and (3) amended the mark description.  Nos. (2) and (3) are acceptable.  The amended identification of goods and mark description have been entered into the record.

 

Section 2(d) Refusal – Likelihood of Confusion

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 5214678.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

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.

 

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, 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.”

 

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).

 

As explained in the prior Office action, 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 the common wording “VOGUE,” the marks are highly similar in sound, appearance, and overall commercial impression.  See the excerpt from http://www.ahdictionary.com/word/search.html?q=vogue attached to the October 23, 2020 Office action for the definition of “vogue.”

 

The word “VAPORS” in registrant’s mark has been considered but given less weight in the likelihood of confusion analysis because it is descriptive of a feature, characteristic, or use of registrant’s goods and has been disclaimed.  Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

The fact that applicant’s mark contains a design element while registrant’s mark is in standard characters is insufficient to overcome the likelihood of confusion.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Relatedness of the Goods

 

It is well-settled that the compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Moreover, where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984).  

 

In this case, registrant’s goods are liquids specifically designed for use in electronic cigarettes, i.e., “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 Internet evidence attached to the October 23, 2020 Office action, 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).

 

Applicant’s Priority of Use Argument

 

Applicant argues that it “is the owner of U.S. Reg. No. 4686346 for the mark [VOGUE (and Design)] in Class 34, the application for which was filed on January 27, 2014.  The application matured into the Cited Registration was filed on September 22, 2015.  Accordingly, Applicant has priority in Applicant’s Mark.”

 

Applicant’s claim of priority of use is not relevant to this ex parte proceeding.  See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).  Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods specified in the certificate.  During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration.  TMEP §1207.01(d)(iv).

 

For the foregoing reasons, the Section 2(d) likelihood of confusion refusal is maintained and made FINAL.

 

Responding to a Final Office Action

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

If applicant has any questions about this final Office action, please call or email the assigned examining attorney.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@uspto.gov

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. 

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 13, 2021 for

U.S. Trademark Application Serial No. 90046018

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 13, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”