To: | JNK Cosmetics LLC (attorneyjskim@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90280738 - XPRO - N/A |
Sent: | April 27, 2021 02:47:15 PM |
Sent As: | ecom105@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90280738
Mark: XPRO
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Correspondence Address:
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Applicant: JNK Cosmetics LLC
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Reference/Docket No. N/A
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.
Issue date: April 27, 2021
This Office action is in response to applicant’s communication filed on April 5, 2021.
In a previous Office action dated March 29, 2021, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. Based on applicant’s response, the Section 2(d) Refusal has been withdrawn as to Registration No. 4232457.
Further, 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:
FINAL SECTION 2(d) REFUSAL
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
Applicant’s mark is XPRO in standard character form, owned by JNK Cosmetics LLC. Registrant’s marks are PRO-X in typed form, PRO X in standard character form, PRO X in stylized form, and PRO X BY OLAY & design, owned by The Procter and Gamble Company.
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).
As indicated in the previous Office action, the marks are confusingly similar because they feature the terms X and PRO. Applicant merely transposes these terms that also appear in the registered marks. The additional wording and design in Registration No. 5644447 do not obviate the similarity of the marks. 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. Furthermore, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Applicant’s goods are “Foot scrubs; Nail cream; Nail gel; Soap for foot perspiration; Non-medicated foot cream” in International Class 3.
Registrant’s goods in Registration No. 2588821 are “cosmetic products, namely, skin treatment products, namely, moisturizers” in International Class 3.
Registrant’s goods in Registration Nos. 3742882, 3752783 and 3752783 are “non-medicated skin care preparations” in International Class 3.
Although applicant has amended the identification of goods to avoid a likelihood of confusion with the registered marks, applicant will note that the amended goods are also related to those in the cited registrations.
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registrations use broad wording to describe moisturizers and non-medicated skincare preparations, which presumably encompasses all goods of the type described, including applicant’s more narrow foot scrubs, nail cream, nail gel, foot perspiration soap, and non-medicated foot cream. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Thus, upon encountering applicant’s and registrant’s marks used on the identified goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Accordingly, registration of the applied-for mark remains refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2588821, 3742882, 3752783, and 5644447. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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).
/Joanna E. H. Fiorelli/
Joanna E. H. Fiorelli
Trademark Examining Attorney
Law Office 105
571-272-4245
joanna.fiorelli@uspto.gov
RESPONSE GUIDANCE