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:  July 08, 2021

 

 

Introduction

 

This Office action is in response to applicant’s communications filed on May 21, 2021.

 

In a previous Office action dated November 23, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Section 2(d) for likelihood of confusion with registered marks.  In addition, applicant was required to satisfy the following requirements: submit a copy of foreign registration and a verified statement.

 

Based on applicant’s response, the trademark examining attorney acknowledges that the following requirements have been satisfied: a copy of foreign registration and a verified statement have been provided.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

-          Section 2(d) Refusal – Likelihood of Confusion

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark has been 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 registrations attached to the November 2020 Office action. 

 

In its response, the applicant requested that the examining attorney suspend further action on the application pending the potential cancellation of the cited registrations, Registration Nos. 4815383 and 4705938, based on the registrant’s need to Declarations of Use or Excusable Nonuse under Section 71 for its registrations. Based on a review of the maintenance files for the cited marks, the examining attorney has concluded that suspension is not yet appropriate because the cited registrations are not in their six-month grace period. Suspension is appropriate only when the application is in condition for final action and the cited registration is in the six-month grace period for filing registration maintenance documents or that grace period has passed but the USPTO automated records have not yet been updated to indicate that such documents have been filed and accepted.  TMEP §716.02(e). 

 

To avoid inadvertent cancellation or expiration of a registration due to a delay in processing maintenance documents, the USPTO’s policy is to wait until 30 days after expiration of the grace period before updating its automated records to show that a registration has been cancelled or expired.  Id.

 

In this case, registration maintenance documents for the cited Registration Nos. 4815383 and 4705938 are not due until Sep. 24, 2021, respectively.  Therefore, the request to suspend the application is denied.

 

Further, the applicant alleges that the registrant does not appear to be using the cited marks in U.S. commerce and most likely has never used the cited marks in U.S. commerce.  However, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

Based on the foregoing, the Section 2(d) refusal is now made FINAL based on the analysis below against which the applicant has made no arguments.

 

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

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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.

 

The applied-for mark is included in its entirety in the registered marks.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

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

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

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 remaining goods are related and are provided through the same trade channels 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 and/or services] 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).

 

The Internet evidence attached to the November 2020 Office action 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. The additional evidence hereto from maccosmetics.com, rituals.com, origins.com, dior.com and guerlain.com supports the examining attorney’s conclusion. 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.  The examining attorney now makes this refusal FINAL.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

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 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).

 

 

/Ojeyemi, Ashley/

Examining Attorney

Law Office 128

(571)270-3399

ashley.ojeyemi@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 applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• 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 July 08, 2021 for

U.S. Trademark Application Serial No. 90080210

 

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. 

 

 

/Ojeyemi, Ashley/

Examining Attorney

Law Office 128

(571)270-3399

ashley.ojeyemi@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 July 08, 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.”