To: | Cai Zhenghao (trademarks@dililaw.com) |
Subject: | U.S. Trademark Application Serial No. 90253095 - VGR VOYAGER - US014200T |
Sent: | March 09, 2022 01:43:04 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90253095
Mark: VGR VOYAGER
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Correspondence Address: 17700 CASTLETON STREET, STE 353
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Applicant: Cai Zhenghao
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Reference/Docket No. US014200T
Correspondence Email Address: |
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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.
This Office action is in response to applicant’s communication filed on 7/9/2021 and 1/28/2022.
In a previous Office action(s) dated 4/5/2021 and 8/12/2021, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): provide domicile.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: domicile provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) 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
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).
Here, applicant seeks to register the mark VGR VOYAGER in stylized form.
The mark in U.S. Registration No. 2558692 is VOYAGER in standard characters.
The mark in U.S. Registration No. 1212997 is VOYAGER in standard characters.
Applicant argues its mark does not create a similar overall commercial impression with the registered marks. However, as discussed above, applicant and registrant share the identical wording VOYAGER and applicant has not added any wording to its mark that would alter the commercial impression.
Applicant further argues its mark is presented in stylized form. However, as discussed above, registrant’s marks are presented in standard characters and thus may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.
However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration is not for the same mark. Thus applicant’s prior registration does not obviate the Section 2(d) refusal.
For the foregoing reasons, the marks are confusingly similar.
Comparison of the Goods
Applicant seeks to register its mark for use on or in connection with “Razors; Razor blades; Razors, electric or non-electric; Depilation appliances, electric and non-electric.”
The mark in U.S. Registration No. 2558692 is used on or in connection with “hand-held electric hair dryers.”
The mark in U.S. Registration No. 1212997 is used on or in connection with “Manicure Sets Comprising One or More of the Following Instruments: Fingernail Clipper, Toenail Clipper, Nail File, Tweezer, Pocket Knife, Bottle Opener, Screwdriver, Scissors, and Cuticle Pusher.”
Applicant argues that the previously submitted evidence does not show applicant’s mark or the registrant’s mark sold on these websites. However, the attached evidence is provided to show that
the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark, namely, various types of razors on the one hand, and hair dryers and/or manicure accessories on the other hand.
Conclusion
Because the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Accordingly, applicant’s mark is not entitled to registration.
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).
Segal, Molly
/Molly Segal/
Trademark Examining Attorney
Law Office 105
(571) 272-6490
Molly.Segal@uspto.gov
RESPONSE GUIDANCE