To: | Graphene Laboratories Inc. (janet@mavenip.com) |
Subject: | U.S. Trademark Application Serial No. 90293722 - G6 WELLNESS - N/A |
Sent: | April 06, 2021 03:12:18 PM |
Sent As: | ecom119@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90293722
Mark: G6 WELLNESS
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Correspondence Address: |
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Applicant: Graphene Laboratories Inc.
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Reference/Docket No. N/A
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: April 06, 2021
INTRODUCTION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The following refusal applies to the following goods only:
IC 011: Air purifiers; Air purifying apparatus
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 6039304. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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. 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.
In this case, applicant is seeking to register G6 WELLNESS in standard characters for, as relevant here, “Air purifiers; Air purifying apparatus” in International Class 011. Registrant has registered 6G FILTER in stylized font with designs in International Class 011 for, as relevant here, “air purifying apparatus and machines; air purifiers.”
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, the dominant feature of applicant’s mark is “G6” and the dominant feature of registrant’s mark is “6G”. This is because they are the first element of each mark and therefore the one that consumers will pay the most attention to. Working from this premise, the dominant features of the marks are merely the reverse of the letters “G” and the numeral “6”.
Based on these considerations, the marks are deemed similar for Section 2(d) purposes.
COMPARISON OF THE GOODS
In this case, the relevant goods in the application and registration are identical. Therefore, it is presumed that the channels of trade and class 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.
Based on these considerations, the goods are deemed related for Section 2(d) purposes.
CONCLUSION
Overall, because the marks are similar and the goods are identical, a likelihood of confusion arises as to the underlying source of applicant’s goods. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
The stated refusal refers to the following goods and does not bar registration for the other goods:
IC 011: Air purifiers; Air purifying apparatus
RESPONDING TO SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
(1) Deleting the goods to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office Action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
PARTIAL ABANDONMENT ADVISORY
IC 011: Air purifiers; Air purifying apparatus
The application will then proceed with the following goods only:
IC 011: Sanitizing apparatus using ultraviolet light for sanitizing surfaces of enclosed spaces like rooms and HVAC systems not for medical purposes; Germicidal lamps for purifying air
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
ASSISTANCE
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.
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE