United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90172158
Mark: YSL
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Correspondence Address: COLLEN IP, INTELLECTUAL PROPERTY LAW, P. |
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Applicant: Yves Saint Laurent
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Reference/Docket No. AX917
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 20, 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.
Summary of Issues that Applicant Must Address:
1. Refusal – Section 2(d) Refusal to Register – Likelihood of Confusion:
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.
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).
The applicant’s mark is YSL in a stylized font.
The mark in U.S. Registration Number 0766417 is YSL.
The mark in U.S. Registration Number 0855232 is YSL.
The mark in U.S. Registration Number 1025591 is YSL.
The mark in U.S. Registration number 1208578 is YSL.
The mark in U.S. Registration Number 1377808 is YSL PARIS.
The mark in U.S. Registration Number 1711127 is YSL.
The mark in U.S. Registration Number 1712999 is YSL.
The mark in U.S. Registration Number 1746720 is YSL.
The mark in U.S. Registration Number 3265340 is YSL.
The mark in U.S. Registration Number 3818411 is YSL PERFECT TOUCH plus design.
The mark in U.S. Registration Number 4712665 is YSL PARIS YVES SAINT LAURENT 7 AVENUE GEORGE V PARIS 8 IME plus design.
The mark in U.S. Registration Number 4871309 is YSL.
The mark in U.S. Registration Number 4983549 is YSL in a repeating pattern.
The mark in U.S. Registration Number 5101024 is YSL MON PARIS.
The mark in U.S. Registration Number 5832215 is LIBRE YSL.
The mark in U.S. Registration Number 6055108 is YSL MAKE IT YOURS.
The mark in U.S. Registration Number 6139152 is LIBRE YSL.
The mark in U.S. Registration Number 6149114 is YSL MON PARIS INTENSEMENT.
The applicant’s mark is confusingly similar to the registrants’ marks because they all include the identical wording YSL.
Accordingly, because the applicant’s mark and the registrants’ marks all contain the identical wording YSL, the marks are confusingly similar.
Comparison of the Goods/Services:
The applicant’s goods are, “Fabrics; bed coverings and table coverings; textile articles not included in other classes”.
The goods in U.S. Registration Number 0766417 are “shoes”.
The goods in U.S. Registration Number 0855232 are, “perfume, toilet water, bath oil, and dusting powder.”
The goods in U.S. Registration Number 1025591 are, “[ bubble bath, ] body lotion, aftershave lotion, after-shave balm, [ skin bronzer, ] cologne and soap.”
The goods in U.S. Registration Number 1208578 are, “Ladies Hosiery, Pantyhose and Socks; Children's Outerwear-Namely, Sweaters, Blouses, Shirts, Coats and Jackets, Men's Underwear, Neckties, and Scarves.”
The goods in U.S. Registration Number 1377808 are, “perfume”.
The goods in U.S. Registration Numbers 1711127 and 1712999 are, “keyholders”, “sunglasses, optical frames and cases for glasses”, “jewelry, clocks and watches”, “handbags, luggage, tote bags, briefcases, wallets, billfolds, change purses, and key fobs” and “women's and girls' apparel; namely, dresses, gowns, skirts, slacks, pants, suits, blouses, shirts, sweaters, jeans, neckwear, scarves, belts, sleepwear, underwear, lingerie, robes, camisoles, slips, brassieres, robes, swimwear, beach cover-ups, shoes, slippers, sandals, boots, gloves, hosiery, tights, coats, raincoats, jackets, capes, shawls, fur muffs and headwear; men's and boys apparel; namely, outercoats, raincoats, blazers, sportcoats, vests, suits, pants, jackets, tuxedos, shirts, jeans, sweaters, neckwear, pocket squares, pajamas, night shirts, robes, bath wraps, shoes, sandals, slippers, hosiery, socks, gloves, scarves, hats, swimwear, belts and suspenders”.
The goods in U.S. Registration Number 1746720 are, “cosmetics; namely, lipstick, lip liner, nail lacquer, eye make-up, foundation, face powder, concealer, blush, skin cleansers, creams and lotions.”
The goods in U.S. Registration Number 3265340 are, “Perfumes; eau-de-cologne, eau de toilette, deodorants for personal use; perfumery; [ essential oils for personal use; oils for cosmetic purposes; soaps; ]toiletry milks, namely, [ cleansing milks; ] skin cleansing products, namely, cleansing creams and lotions; beauty masks; cosmetics; creams; gels, lotions and cosmetic products for skin care, namely, moisturizing creams; anti-wrinkle creams; anti-wrinkle gels; [ beauty masks; cosmetic slimming preparations, namely, body creams for cellulite reduction; slimming body creams and gels for cellulite reduction; ] cosmetic suntan preparations, namely, [ creams and gels for suntan; after-sun creams and ] gels for skin care, [ pre-moistened cosmetic tissues impregnated with cosmetic lotions; ] cosmetic preparations for baths; bath and shower gels; [ bubble baths; ] creams, gels and lotions for facial care for cosmetic use; gels and lotions for skin care for cosmetic use; make-up remover, make-up products, namely, foundations, blusher, make-up powders, mascara, cosmetic pencils, eye liner pencils, eye liners, eyebrow pencils, make-up, eye shadows, blushes, nail polish, lipsticks, lip glosses, lip liner pencils; lip [ and nail balms; hair lotions, shampoos; ] shaving products, namely, [ creams and lotions; ] after-shave balms; after-shave lotions [ ; moisturizing after-shave creams; shaving soaps ]”
The goods in U.S. Registration Number 3818411 are, “Facial foundations”.
The goods in U.S. Registration Number 4712665 are, “Leather and imitation of leather goods, namely, handbags, wallets, purses, key cases in leather”.
The goods in U.S. Registration Number 4871309 are, “Men's, women's clothing, namely, dresses, skirts, suits, jackets, pants, shirts, tee-shirts; evening wear, namely, evening dresses, blazers; sportswear, namely, sports shirts, sport jerseys; clothing accessories, namely, scarves; belts for clothing; footwear.”
The goods in U.S. Registration Number 4983549 are, “spectacle cases, apparatus for recording, transmission or reproduction of data, sound or images; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely, covers, cases, chargers and charging pods, adapter cases, computer cables, cases and covers for portable computers, covers, battery housings; USB flash drives and other digital recording media; photographic machines and instruments, namely, bags for cameras and photographic equipment” and “Paper, cardboard, cardboard articles, graphic prints, greeting cards, note cards, blank journal books, blank drawing books, artists' materials; printed publications, namely, catalogs, periodicals, pamphlets, newspapers, magazines, handbooks, leaflets, manuals and books in the fields of fashion and photography; printed photographs; stationery; posters; note books; pencil holders, notepads, writing pads, stationery covers for diaries, Passport holders; holders for checkbooks”, “Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attaché cases, leather diary cases, bags for sports, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets, namely, coordinated luggage sets for travel, leather key cases; harness for animals” and “scarves”.
The goods in U.S. Registration Number 5101024 are, “perfume; bath and shower gels not for medical purposes; cosmetics, namely, lotions for the face, body and hands.”
The goods in U.S. Registration Number 5832215 are, “Perfumed soaps; perfumes; eau de cologne; toilet waters; eau de parfum; personal deodorants; cleaning and fragrancing preparations; scented body lotions and creams; essential oils”.
The goods in U.S. Registration Number 6055108 are, “make-up”.
The goods in U.S. Registration Number 6139152 are, “Perfumed soaps; perfumes; eau de cologne; toilet waters; eau de parfum; personal deodorants; cleaning and fragrancing preparations; scented body lotions and creams; essential oils.”
The goods in U.S. Registration Number 6149114 are, “perfumes”.
The applicant’s goods are related to the registrants’ goods because these types of goods travel through the same channels of trade to the same classes of purchasers. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely fabrics and handbags, shoes, footwear, perfume, jewelry, shirts, cologne, cosmetics, makeup, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Accordingly, because the marks are confusingly similar and the evidence demonstrates that the goods are related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.
2. Potential Refusal – Potential Section 2(d) Refusal to Register:
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.
Applicant must respond to the requirement(s) set forth below.
3. Requirement – Identification of Goods:
A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). To "specify" means to name in an explicit manner. The identification should set forth common names, using terminology that is generally understood. The identification of goods and/or services must be specific, definite, clear, accurate, and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986) , rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966) ; California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953). TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
International Class 020:
Fitted table covers.
International Class 024:
Polyester fabrics; bed covers and plastic table covers; textile articles not included in other classes, namely, banners of textile.
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.
Requirements for a Multiple Class Application:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
4. Requirement – Unsigned Application:
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.
5. Requirement - New Drawing Required:
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
6 Requirement – Certificate of 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).
7. Advisory – Assistance:
Please email the assigned trademark examining attorney at colleen.dombrow@uspto.gov 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.
PLEASE NOTE: If applicant requires assistance navigating the online response form, applicant should contact the Trademark Assistance Center at 571-272-9250.
8. Advisory – Response Guidelines:
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Colleen Dombrow/
Trademark Attorney
Law Office 101
571-272-8262
colleen.dombrow@uspto.gov
RESPONSE GUIDANCE