United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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: April 05, 2021
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:
- Section 2(d) Partial Refusal – Likelihood of Confusion
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF
CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE FOLLOWING
GOODS: Hair dryers; Hand-held electric hair dryers; Nail lamps
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2558692 and
1212997. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
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.
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of
terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of
Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813,
1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar);
In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the only wording
in the registered marks is identicial to the only wording in applicant’s mark. Further, the additional lettering VGR in the beginning of applicant’s mark does not affect the overall similarity of the
marks.
For the foregoing reasons, applicant’s applied-for mark is confusingly similar to the registered marks.
Comparison of the Goods
The compared goods and/or services 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).
Applicant seeks to register its mark for use on or in connection with “Hair dryers; Hand-held electric hair dryers; Nail lamps.”
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.”
When analyzing an applicant’s and registrant’s goods and/or services for
similarity and relatedness, that determination is based on the description of the goods and/or services 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, the following goods in the application and Registration No. 2558692 are identical: hand-held electric hair dryers. 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 are related.
Further, the attached Internet evidence, consisting of screenshots from ulta.com, Sephora.com and
sallybeauty.com, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark. Thus,
applicant’s and registrant’s goods and/or services 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).
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or
services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690
(Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrants. TMEP §1207.01(d)(i); see
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed.
Cir. 1988).
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Accordingly, applicant’s mark is not
entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
If applicant does not respond to this Office action within the six-month period for response, the
following goods in International Class 11 will be deleted from the application: Hair dryers; Hand-held electric hair dryers; Nail lamps. The application will then proceed with the following goods in International Class 11 only: Faucets; Humidifiers; Refrigerators; Air purifying
apparatus and machines; Coffee percolators, electric; Electric coffee makers; Electric fans; Electric food warmers; Electric soymilk makers; Kettles, electric; Radiators, electric; Water heaters;
Water purification installations. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
CONTACT INFORMATION
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.
/Molly Segal/
Molly Segal
Trademark Examining Attorney
Law Office 105
(571) 272-6490
Molly.Segal@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.
