To: | Roja Parfums Holdings Limited (christine.baker@fisherbroyles.com) |
Subject: | U.S. Trademark Application Serial No. 90080210 - ENIGMA - JAKEMP |
Sent: | November 23, 2020 12:47:39 PM |
Sent As: | ecom128@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90080210
Mark: ENIGMA
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Correspondence Address: 470 ATLANTIC AVENUE, 4TH FLOOR
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Applicant: Roja Parfums Holdings Limited
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Reference/Docket No. JAKEMP
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 23, 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.
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 Nos. 4705938 and 4815383. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant applied for the mark “ENIGMA” in standard characters for “Perfumery; perfume; parfum; perfume extrait; fine fragrance; eau de parfum; eau de toilette; cologne; after-shave; perfumed sprays for the hair; room fragrance; fragrance diffusers” in International Class 003.
The registrant’s marks are:
- U.S. Registration No. 4815383 for “ENIGMA BY SIBERIAN HEALTH” in standard characters for (in relevant part) “after-shave lotions; amber perfume; beauty masks; cakes of toilet soap; cosmetics; cosmetic creams; cosmetic kits comprised of lipstick, lip gloss, mascara; cosmetic pencils; cosmetic preparations for baths; cosmetic preparations for skin care; eau de Cologne; fumigation preparations in the nature of perfumes for use on the body; lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up preparations; make-up powder; make-up removing preparations; mascara; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; perfumes; perfumery; pomades for cosmetic purposes; potpourris; scented water; toilet water” in International Class 003.
- U.S. Registration No. 4705938 for “ENIGMA NATURE” in standard characters for (in relevant part) “after-shave lotions; almond milk for cosmetic purposes; amber perfume; beauty masks; cakes of toilet soap; cosmetics; cosmetic creams; cosmetic kits comprised of lipstick, lip gloss; cosmetic pencils; cosmetic preparations for baths; cosmetic preparations for skin care; eau de Cologne; fumigation preparations in the nature of perfumes; greases for cosmetic purposes; lip glosses; lipsticks; lotions for cosmetic purposes; make-up; make-up preparations; make-up powder; make-up removing preparations; mascara; oils for perfumes and scents; oils for toilet purposes; perfumes; perfumery; potpourris fragrances; scented linen water; toilet water
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.
Similarity 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).
The applicant applied for “ENIGMA” in standard characters. The registrations are “ENIGMA” and “ENIGMA NATURE” in standard characters.
Based on the foregoing, the compared marks are confusingly similar.
Comparison of the Goods
In addition to the marks being confusingly similar, the goods in this comparison are also related.
The applicant applied for the mark “ENIGMA” in standard characters for “Perfumery; perfume; parfum; perfume extrait; fine fragrance; eau de parfum; eau de toilette; cologne; after-shave; perfumed sprays for the hair; room fragrance; fragrance diffusers” in International Class 003.
The registrations are for various cosmetics and fragrance products, including perfumes, cologne and room fragrances.
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Identical Goods
In this case, both the applicant and the registrant offer “perfume, perfumery, after-shave.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
Related Goods
The attached Internet evidence from bobbybrown.com, Sephora.com, ulta.com and anthropology.com 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).
Based on the foregoing, the application must be refused under Section 2(d) of the Trademark Act for likelihood of confusion with the registrations.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Copy of Foreign Registration Required
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
Verified Statement Required
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
Response Guidelines
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
/Ojeyemi, Ashley/
Examining Attorney
Law Office 128
(571)270-3399
ashley.ojeyemi@uspto.gov
RESPONSE GUIDANCE