To: | Graphene Laboratories Inc. (janet@mavenip.com) |
Subject: | U.S. Trademark Application Serial No. 90293722 - G6 WELLNESS - N/A |
Sent: | November 05, 2021 01:02:48 PM |
Sent As: | ecom119@uspto.gov |
Attachments: |
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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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: November 05, 2021
This Office Action is in response to applicant’s communication filed on September 28, 2021.
In a previous Office Action dated April 6, 2021, the Trademark Examining Attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion.
Based on applicant’s response, 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:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The following refusal applies to the following goods only:
IC 011: Air purifiers for home and personal use; Air purifying apparatus for home and personal use
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 previously 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, with “WELLNESS” disclaimed for, as relevant here, “Air purifiers for home and personal use; Air purifying apparatus for home and personal use” in International Class 011. Registrant has registered 6G FILTER in stylized font with designs, with “FILTER” disclaimed, 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 registration uses broad wording to describe “air purifying apparatus and machines; air purifiers”, which presumably encompasses all goods of the type described, including applicant’s more narrow “Air purifiers for home and personal use; Air purifying apparatus for home and personal use”. 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 further 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)).
Based on these considerations, the goods are deemed related for Section 2(d) purposes.
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Applicant repeats many of its arguments throughout its response. In the interests of ease of reading and brevity, the Examining Attorney will address all of them here below.
Applicant points out the colors and stylization of registrant’s mark. However, applicant’s mark is in standard characters. A mark in typed or standard characters 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. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Therefore, as applied here, if allowed to register, applicant would be free to stylize its mark in the same manner as registrant’s.
To the extent applicant complains that the anti-dissection rule is being violated, this argument fares no better. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Applicant complains that the notion that “G6” and “6G” are the dominant features of the marks is “conclusory” and “contrary to established law”. Even assuming this was the state of things, which the Examining Attorney does not concede, they are the dominant features on other grounds. In addition to being the first elements, the balance of each of the marks, “WELLNESS” and “FILTER” are disclaimed. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Therefore, “G6” and “6G” are still the dominant features or elements of the marks in this case.
Applicant also maintains that the transposition of “G” and “6” combined with the disclaimed portions of the marks change the commercial impressions enough to obviate the refusal. However, even if there were distinctions in this way, which the Examining Attorney does not concede, as noted above, the relevant goods here are virtually and legally identical as noted above. Where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
In the vein, applicant’s argument attempts to get around this notion by trying to look at all of registrant’s goods. However, the refusal in this case is limited to applicant’s “Air purifiers for home and personal use; Air purifying apparatus for home and personal use” which are virtually identical to registrant’s “air purifying apparatus and machines; air purifiers”. That registrant has other goods in its active registration is of no moment nor of any assistance to applicant. What is relevant here is the compared goods at issue in this case, which are identical goods.
Applicant argues as to the goods that “registrant’s business” is not related to applicant’s, which is not relevant, the goods are identical, applicant’s and registrant’s business model is immaterial.
To the extent applicant believes that its addition of “or home and personal use” overcomes the refusal, it does not. The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods in the registration, the presumption is that the goods in all trade channels normal for such goods and are available to all potential classes of ordinary consumers of such goods. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii). Here, registrant’s goods have no such restrictions, so applicant adding a restriction of sorts does not alter the calculus.
To the extent that much of applicant’s arguments are based on the notion registrant’s business is not in household or personal use goods, determining likelihood of confusion under Section 2(d) is based on the description of the relevant goods stated in the actual 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)). Therefore, although applicant spends a lot of time on the differences between the presence and business of the parties, the application and registration still contained transposed characters in their respective dominant features for identical goods.
CONCLUSION
Overall, because the marks are similar and the goods are related, a likelihood of confusion arises as to the underlying source of applicant’s goods. Moreover, applicant’s arguments to the contrary are unconvincing. Accordingly, the refusal to register pursuant to Section 2(d) of the Trademark Act is hereby maintained and made FINAL.
The stated refusal refers to the following goods and does not bar registration for the other goods:
IC 011: Air purifiers for home and personal use; Air purifying apparatus for home and personal use
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 or services 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 for home and personal use; Air purifying apparatus for home and personal use
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 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).
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE