United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90680195
Mark: HIMS BY SKIMS
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Correspondence Address: |
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Applicant: Skims Body, Inc.
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Reference/Docket No. SKB-64460
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: December 30, 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.
REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
The applied-for mark is HIMS BY SKIMS (in standard character form) for “Retail store services featuring clothing, hats, footwear, fragrances, lotions, and accessories” in International Class 35.
Registration No. 6319117 is HIMS (in standard character form) for “Abdominal hernia belts; Abdominal pads; Air cushions for medical purposes; Anti-nausea wristbands; Baby bottle nipples; Baby bottles; Back supports for medical purposes; Chiropractic instruments; Corsets for therapeutic use; Electric massage appliances, namely, electric vibrating massager; Hearing aids; Love dolls; Massage apparatus for eyes; Massage chairs; Medical devices, namely, pulse oximeters; Medical gloves; Medical hosiery, namely, leotards; Medical treatment apparel; Orthopaedic belts; Orthopaedic footwear; Orthopedic support bandages; Sanitary masks for medical wellness purposes; Sex dolls; Sex toys; Sphygmomanometers; Thermometers for medical use” in International Class 10.
The following registrations are owned by the same registrant. Registration No. 5752035 is HIMS (in standard character form) for “non-medicated hair care preparations; non-medicated skin care preparations” in International Class 3.
Registration No. 5752036 is HIMS (in standard character form) for “medicated hair care preparations; dietary and nutritional supplements; vitamins; pharmaceuticals for the treatment of erectile dysfunction; medicated skin care preparations” in International Class 5.
Registration No. 5752037 is HIMS (in standard character form) for “online retail store services featuring hair care preparations, skin care preparations, dietary and nutritional supplements, vitamins, pharmaceuticals for the treatment of erectile dysfunction; pharmaceutical services, namely, processing online prescription orders in retail pharmacies” in International Class 35.
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).
The applied-for and registered marks share the identical wording HIMS. The registered marks are wholly encompassed in the applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Based on the foregoing, the applicant’s applied-for and registrants’ marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods and Services
The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re Country Oven, Inc., 2019 USPQ2d 443903, at *12 (TTAB 2019) (holding the use of identical marks for bread buns and retail bakery stores and shops likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion);TMEP §1207.01(a)(ii).
Based on the analysis above, applicant’s and registrants’ goods and/or services are related.
Because applicant’s and registrants’ marks are similar and the goods and/or services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
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.
Christina Calloway
/Christina Calloway/
Trademark Examining Attorney
Law Office 122
United States Patent and Trademark Office
Christina.Calloway@uspto.gov
571-272-7342
RESPONSE GUIDANCE