United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90377825
Mark: GALAXY
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Correspondence Address:
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Applicant: LDSKS GLOBAL, 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: June 12, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
1. 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. 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 and differences in the marks.”); TMEP §1207.01.
Statement of Facts Specific to this Application:
Applicant has applied to register the mark GALAXY in standard characters in International Class 5 for “male sexual enhancer in the form of capsule.”
Registrant’s mark is GROOMING GALAXY in standard characters. Registrant’s goods in International Class 5 are “Pharmaceutical preparations, namely, antibacterial handwash, antibacterial hand lotions, antibacterial spray, antibacterial cleaners, antibacterial alcohol skin sanitizer gel, antiseptic wipes, acne medications, acne treatment preparations, adhesives for dental and dentistry use, adhesives for dentures, amino acids for medical purposes, amino acids for nutritional purposes, antiseptics, anti-diabetic pharmaceuticals, anti-inflammatories, anti-inflammatory gels, anti-inflammatory ointments, anti-inflammatory sprays, anti-itch cream, anti-itch ointment, appetite suppressants, appetite suppressants for medical purposes, appetite suppressant pills, antioxidant enriched coffee for medical purposes, antitoxins, antivirals, anti-cavity fluoride gels for use by dentists, anti-cavity dental rinses, anti-cavity mouthwashes, anti-cavity mouth rinses, anti-cavity dental rinses, anti-cough drops, anti-drowsiness treatment preparations, Argan oil for medical purposes, Aromatherapy creams for treating headaches, curing insomnia and relieving stress, Aromatherapy lotions for treating headaches, curing insomnia and relieving stress, Aromatherapy oils for treating headaches, curing insomnia and relieving stress, Aromatherapy oils, other than essential oils, for treating anxiety, Aromatherapy oils, other than essential oils, for treating headaches, astringents for medicinal purposes, athletes' foot lotions, athletes' foot powders, balms for medical purposes, bandages for skin wounds, bandages for dressings, bath salts and bath preparations for medical use, beta blockers, Cholesterol reducers, contraceptive preparations, decongestant nasal sprays and decongestant capsules; dietetic foods adapted for medical use, food for babies; mineral food-supplements; food-supplements based on vitamins, minerals and raw products from plants; vitamin preparations; medicine for human purposes, namely, beta blockers; dietetic foods and substances adapted for medical purposes, namely, enzymes for medical purposes; nutritional supplements; pharmaceutical and dietary food supplements; food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, sachets, powders and liquids; herbal extracts; Meal replacement bars and drinks adapted for medical use; protein supplements; carbohydrate supplements; anti-bacterial and medicated face, hand and skin washes; abrasive fluids for dental use; abrasive paste for dental use; abrasive powder for dental use; adhesion promoters for dental use; adhesive cements for dental use; adhesive compositions and preparations for dental use; adhesives for affixing dental prosthesis; adhesives for dental use; anti-microbial, antiseptic and medical mouthwash preparations, namely, gargles for oral hygiene purposes; colouring reagents for revealing dental plaque; cotton for dental purposes; dental bonding material; medicated dental health gum; dental rinses, medicated; tablets for dental use in indicating tartar on the teeth; all being for human purposes.”
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).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, there is a likelihood of confusion because the dominance of the word GALAXY in each mark creates a similar commercial impression for the marks. Applicant’s mark is GALAXY, so the word GALAXY is dominant in creating the commercial impression for its mark. Registrant’s mark is GROOMING GALAXY. The word GROOMING has been disclaimed in registrant’s mark as it is descriptive of registrant’s goods. That, plus the fact that registrant’s mark starts with GALAXY, renders that word dominant in creating the commercial impression for registrant’s mark. As the word GALAXY is dominant in creating the commercial impression for each mark, the marks have a similar commercial impression, giving rise to a likelihood of confusion.
Therefore, the marks are confusingly similar.
Relatedness of the Goods:
In this case, applicant’s goods are listed as “male sexual enhancer in the form of capsule” in International Class 5. Per the identification of goods section below, it appears that an accurate description of applicant’s goods are “male sexual enhancer in the form of herbal male enhancement capsules.” The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely “herbal male enhancement capsules” and “dietary supplements”, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
The filing date of pending U.S. Application Serial No. 88951885 (GALAXY LEMONADE) precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
The identification of goods must be amended because it includes wording that is indefinite, as further explained below.
Applicant used the following identification in its application:
International Class 5: Male Sexual Enhancer in the form of capsule
Applicant must clarify the wording “Male Sexual Enhancer” in the identification of goods in International Class 5 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This wording is indefinite because it does not make clear what the goods are. For example, this could be “Male sexual enhancer in the form of herbal male enhancement capsules” or “herbal supplements for male enhancement in the form of a capsule”, both in International Class 5.
Applicant may substitute the following wording, if accurate:
International Class 5: Male sexual enhancer in the form of herbal male enhancement capsules
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 and requirement 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.
Edward Germick
/Edward J. Germick/
Examing Attorney
Law Office 102
(571) 272-5862
edward.germick@uspto.gov
RESPONSE GUIDANCE