throbber
From: Pulvermacher, Tasha
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`Sent: 9/27/2021 10:14:03 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 90149692 - XHEMPLIFY - XHMPLF.0002T - EXAMINER
`BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 90149692.doc
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`Unite d State s Pate nt and Trade mark Office (USPTO)
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`U.S. Application Serial No. 90149692
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`Mark: XHEMPLIFY
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`Correspondence Address:
` MARK BORGHESE
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` BORGHESE LEGAL, LTD.
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` 10161 PARK RUN DRIVE, SUITE 150
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` LAS VEGAS, NV 89145
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`Applicant: Xhemplify LLC
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`Reference/Docket No. XHMPLF.0002T
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`Correspondence Email Address:
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` mark@borgheselegal.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant Xhemplify LLC has appealed a final refusal to register the mark XHEMPLIFY for
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`“Cosmetics; Lip balm; all of the foregoing goods that contain hemp and CBD are derived from hemp with
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`a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
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`in International Class 3 under Trademark Act Section 2(d) on the ground that there is likelihood of
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`confusion with the mark in U.S. Registration No. 5247088. It is respectfully requested that this refusal be
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`affirmed.
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`FACTS
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`On August 31, 2020, Applicant applied for registration on the Principal Register of the mark
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`XHEMPLIFY in standard characters for “Cosmetics; Lip balm; all of the foregoing goods that contain
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`hemp and CBD are derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not
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`more than 0.3 percent on a dry weight basis” in International Class 3. 1
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`In the Office action dated April 1, 2021, the previously-assigned trademark examining attorney
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`refused registration of the applied-for mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
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`§1052(d), based on a likelihood of confusion with the mark in U.S. Reg. No. 5247088, for the mark
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`HEMPLIFY in standard characters for, in relevant part, “Dietary and nutritional supplements containing
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`hemp” in International Class 5. The examining attorney also refused registration under Sections 1 and 45
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`of the Trademark Act for unlawful use and additionally required an amendment to the identification to
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`avoid deceptiveness for use of CBD in the product.
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`On April 20, 2021, Applicant filed an Office action response containing arguments and third
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`party registrations in favor of withdrawal of the Section 2(d) refusal. Applicant did not explicitly address
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`the Section 1 and 45 unlawful use refusal, but amended the identification.
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`Upon consideration of Applicant’s arguments and evidence in favor of registration, the
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`previously-assigned trademark examining attorney issued a final Office action dated May 27, 2021,
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`which made final the refusal under Section 2(d) of the Trademark Act. The previously-assigned
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`1 Applicant amended to this particular wording in the identificatio n in the April 20, 2021 response. Response to Office
`action, TSDR at p. 1.
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`trademark examining attorney amended the identification based on the April 1, 2021 response and
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`lifted the Sections 1 and 45 Unlawful Use refusal as well as the identification refusal.
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`On July 23, 2021, Applicant filed a timely Notice of Appeal to the Trademark Trial and Appeal
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`Board. Applicant submitted an appeal brief on July 26, 2021.
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`On August 16, 2021, the present application was reassigned to the undersigned trademark
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`examining attorney.
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`For the reasons set forth below, the trademark examining attorney respectfully requests that
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`the Trademark Trial and Appeal Board affirm the refusal to register the applied-for mark pursuant to
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`Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).
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`ISSUE
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`The sole issue on appeal is whether the applied-for mark is so similar to the mark in U.S.
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`Registration No. 5247088 that, when used in connection with Applicant’s goods, a likelihood of
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`confusion exists as to the source of Applicant’s and Registrant’s goods.
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`ARGUMENT
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`THE APPLIED-FOR MARK AND THE REGISTERED MARK ARE CONFUSINGLY SIMILAR AND THE GOODS
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`ARE CLOSELY RELATED SUCH THAT A LIKELIHOOD OF CONFUSION EXISTS UNDER TRADEMARK ACT
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`SECTION 2(d), 15
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` U.S.C. §1052(d).
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles
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`a registered mark that it is likely a potential consumer would be confused, mistaken, or
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`deceived as to the source of the goods and services of the applicant and registrant. See 15
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`U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a
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`case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
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`1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v.
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`Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011)
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`(citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471,
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`1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of
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`equal weight, and any one of the factors may control in a given case, depending upon the
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`evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98
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`USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204
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`(Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ
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`at 567.
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`In this case, the following factors are the most relevant: similarity of the marks,
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`similarity and nature of the goods, and similarity of the trade channels of the goods. See In re
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`Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dak in’s
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`Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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`The overriding concern is not only to prevent buyer confusion as to the source of the
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`goods, but to protect the registrant from adverse commercial impact due to use of a simila r
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`mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690
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`(Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is
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`resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Pack ard Co. v. Packard
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`Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper
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`Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
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`A. THE APPLIED-FOR MARK IS HIGHLY SIMILAR TO THE REGISTERED
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`MARK IN APPEARANCE, SOUND, AND OVERALL COMMERCIAL
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`IMPRESSION.
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`Marks are compared in their entireties for similarities in appearance, sound, connotation, and
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`commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110
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`USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
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`Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).
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`“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re
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`Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812
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`(TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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`When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but
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`instead whether the marks are sufficiently similar in terms of their commercial impression such that
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`[consumers] who encounter the marks would be likely to assume a connection between the parties.”
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`Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach
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`Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012));
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`TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a
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`general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
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`1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir.
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`2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A.
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`1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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`In this case, Applicant’s mark and Registrant’s mark are similar in their sound, appearance, and
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`overall commercial impression. The applied-for mark and the registered mark only differ by a single
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`letter. Specifically, the only difference between the marks is the addition of the letter “X” to the front of
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`the applied-for mark (HEMPLIFY v. XHEMPLIFY). Marks may be confusingly similar in appearance where
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`similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a
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`similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce,
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`228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo
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`Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and
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`COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding
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`CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
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`1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
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`Here, the marks are highly similar in appearance because the letters “HEMPLIFY” dominate the
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`impression of applicant’s mark. While Applicant applied for the mark in standard characters, the
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`particular use of the mark on Applicant’s specimen is informative in this case. Specimen, TSDR p. 1.
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`Applicant submitted CBD lip balm as the specimen with the “X” displayed highly stylized with the
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`appearance of a design element that sets it apart from the rest of the stylized text “HEMPLIFY”. Id. The
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`“X” is pictured as four separate identical lines with a black space in the center to form the letter. It is
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`possible that a consumer would view the “X” as more of design and focus on the term “HEMPLIFY”,
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`causing confusion with the registered mark. This particular display of the applied for mark would likely
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`cause the consumer to focus on and give more weight to “HEMPLIFY”, and discounting the impression of
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`the letter “X”.” See In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v.
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`Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Further, use
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`of the dominant identical term “HEMPLIFY” indicates that these marks are likely to engender the same
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`connotation and overall commercial impression when considered in connection with Applicant’s and
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`Registrant’s respective goods. Id.
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`The sound, appearance, and overall commercial impression of both marks are highly similar with
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`or with the “X” at the beginning of the dominant term “HEMPLIFY”. Marks must be compared in their
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`entireties and should not be dissected; however, a trademark examining attorney may weigh the
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`individual components of a mark to determine its overall commercial impression. In re Detroit Athletic
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`Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,]
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`there is nothing improper in stating that . . . more or less weight has been given to a particular feature of
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`a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”
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`(quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
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`Although marks are compared in their entireties, one feature of a mark, here the base term
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`“HEMPLIFY”, may be more significant or dominant in creating a commercial impression. See In re
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`Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie
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`Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
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`Greater weight is often given to this dominant feature when determining whether marks are confusingly
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`similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105
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`F.3d at 1407, 41 USPQ2d at 1533-34).
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`To the extent that consumers would read applicant’s mark as “XHEMPLIFY,” the marks are
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`similar in overall meaning and commercial impression. Both marks contain almost the same number of
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`letters. The registered mark contains eight letters while the applied for mark has nine. The additional
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`letter, the “X” in “XHEMPLIFY”, appears on the front of the applied-for mark. Thus, a consumer would
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`see the rest of the mark with the same letters in the same order, creating a likelihood of confusion.
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`Additionally, both marks contain the term “HEMP” which a consumer would perceive as a reference to
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`products with hemp or CBD. A consumer could purposefully seek applicant’s or registrant’s products
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`believing that they contain hemp or CBD. See infra Part B (discussing the benefits of CBD in products and
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`that a consumer would seek out such products). Further, the marks contain the same ending of “IFY”
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`which is commonly used to form a verb to denote some type of a cause or action. Therefore, the marks
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`have the same overall meaning and commercial impression of products that are made with hemp.
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`Additionally, the marks are similar in sound. Such similarity in sound alone may be sufficient to
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`support a finding that the compared marks are confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84
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`USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156
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`USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). A consumer could easily treat the “X” as silent at
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`the beginning of the word and continue to pronounce it phonetically as “HEM-PLI-FY”, making the
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`number of syllables the same in both marks. It is not clear based on the spelling that the consumer
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`would assume the applied-for mark is pronounced as “EX-HEM-PLI-FY”. Additionally, the “X” could be
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`pronounced as a “Z” sound, making the mark sound like “ZEM-PLI-FY”, causing confusion with the
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`registered mark with its similarity to the pronunciation of HEMPLIFY. A consumer is also likely to
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`phonetically say the registered mark as “HEM-PLI-FY” and not as “AM-PLI-FY”, especially when the “H” is
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`followed by the letter “E” creating a “HEM” sound. While Applicant argued that the registered mark
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`would be pronounced as “AMPLIFY”, Applicant did not provide any evidence that a consumer would
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`likely pronounce the letter “X” phonetically as “EX” or ignore an “H” at the beginning of the registered
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`term .
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`Applicant asserts that XHEMPLIFY sounds like “exemplify” and that HEMPLIFY sounds like
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`“amplify”, noting that the two words differ in syllable length. However, there is no correct pronunciation
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`of a mark; thus, consumers may pronounce a mark differently than intended by the mark owner. See In
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`re Viterra, Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing Interlego AG v.
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`Abrams/Gentile Entm’t, Inc., 63 USPQ2d 1862, 1863 (TTAB 2002)); TMEP §1207.01(b)(iv). Thus, the
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`marks may be pronounced identically or highly similar creating a likelihood of confusion.
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`Even if consumers pronounced the applied-for mark like the term “EXHEMPLIFY” this
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`pronunciation remains similar to the pronunciation HEMPLIFY, and given the similarities between the
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`marks (i.e., the marks are highly similar in appearance and overall meaning), this difference would not
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`obviate a likelihood of confusion.
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`Indeed both marks contain the term “HEMP” which is a reference to the CBD in the products.
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`The evidence, discussed further below, shows that products contain hemp or CBD which is commonly
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`sought out by consumers. This creates a similar overall commercial impression to the consumer.
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`Because the marks at issue are highly similar in appearance and sound, as well as in their overall
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`commercial impression. Therefore, this du Pont factor weighs heavily in favor of likelihood of confusion.
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`B. APPLICANT’S AND REGISTRANT’S GOODS ARE LIKELY TO TRAVEL THROUGH THE SAME
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`CHANNELS OF TRADE AND BE ENCOUNTERED BY THE SAME CLASSES OF CONSUMERS
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`The goods are compared to determine whether they are similar, commercially related, or travel
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`in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101
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`USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64
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`USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
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`The compared goods need not be identical or even competitive to find a likelihood of confusion.
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`See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000);
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`Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).
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`They need only be “related in some manner and/or if the circumstances surrounding their marketing are
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`such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the
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`same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722
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`(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP
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`§1207.01(a)(i).
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`Applicant’s goods are identified as “Cosmetics; Lip balm; all of the foregoing goods that contain
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`hemp and CBD are derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not
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`more than 0.3 percent on a dry weight basis” in International Class 3. Registrant’s goods are “Dietary
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`and nutritional supplements containing hemp” in International Class 5.
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`Applicant’s and Registrant’s goods are related, especially in light of their use of CBD or hemp.
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`The record shows evidence of third parties which provide both Applicant’s and Registrant’s goods. See
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`May 27, 2021 Office action, TSDR p. 1-24; April 1, 2021 Office action, TSDR p. 1, 6-36.
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`Website
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`IM Bue Botanicals
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`Joy Organics
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`Pacifica
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`Lord Jones
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`Goods
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`CBD capsules (Daily supplements and CBD
`capsules) and CBD beauty products (e.g. facial
`cream, massage oil, lip balm, cellulite night
`cream)
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`CBD capsules (CBD softgels with curcumin) CBD
`cosmetics (CBD salve stick)
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`Dietary and/or nutritional supplements
`(InstaMod B-Chill vitamin B blend) and cosmetics
`(e.g. Hemp Primer, hemp dew setting mist, serum
`mascara, hemp infused eye shadows, hemp fiber
`brow set, gloss)
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`Supplements (CBD gel capsules, CBD tinctures)
`and cosmetics (e.g. CBD body lotion, CBD
`moisturizer, CBD body serum, CBD oil, lip balm)
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`This evidence establishes that the same entity commonly manufactures, produces, or provides
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`the relevant goods and markets the goods under the same mark. Thus, Applicant’s and Registrant’s
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`goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd.,
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`92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-
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`72 (TTAB 2009).
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`Beyond the fact that the evidence shows supplements and cosmetics are manufactured,
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`produced and provided together, the evidence shows that it is common for these products to be sold
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`together with hemp or CBD in particular. The record shows that consumers seek out cosmetics and
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`supplements with CBD to improve their overall health. See April 1, 2021 Office action, TSDR p. 34-50.
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`The article entitled What Can Hemp do For Beauty? from Cosmetics Business discussed the benefits of
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`hemp for the cosmetics industry, stating “{h]emp seed oil’s high and balanced essential fatty acid
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`content (omegas 3 and 6) makes it an ideal ingredient in body care products” and “gives excellent
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`emolliency and a smooth after-feel to lotions, lip balms, conditioners, shampoos, soaps, shaving
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`products, and massage oils”. Id. at 42-43. The article also stated that “Increasing use of CBD as a
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`supplement is the closest thing to ‘snake oil’ that the industry has right now.” Id. at 43-44. Additionally,
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`“CBD actually has demonstrated anti-inflammatory properties”. Id. at 43; see also id. at 47 (explaining
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`the benefits of hemp seed oil including its fatty acids and anti-inflammatory properties). The article Reap
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`the Beauty Benefits of Hemp Seed from Askderm explained that “[h]emp seeds and hemp seed oil can
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`also be incorporated into your diet. They are loaded with antioxidants and amino acids that promote
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`younger looking skin and help reduce inflammation.” Id. at 47. These articles, in combination with the
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`third party websites, show that consumers would seek out both beauty care goods and health
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`supplements that include CBD to improve skin health and overall wellbeing.
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`Applicant argues that there are multiple marks that coexist on the register for cosmetics and
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`supplements. Third-party registrations are entitled to little weight on the issue of confusing similarity
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`because the registrations are “not evidence that the registered marks are actually in use or that the
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`public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB
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`2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see
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`TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does
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`not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474
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`F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477
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`(TTAB 1999).
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`Applicant cites In re Thor Tech, Inc., 113 USPQ2d 1546, 1551 (TTAB 2015) to support the use of
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`third party registrations to show that marks can coexist. See Appeal Brief, TSDR p. 9-10. In that case, fifty
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`third-party registrations were submitted to the record to show that marks for automobiles, trucks, or
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`sport utility vehicles could coexist with recreational vehicles, travel trailers, and motor homes. Id. at
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`1548. Importantly, the case stated that the Internet evidence “was not focused on recreational vehicle
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`trailers, rather it included trailers of many other types or of an unspecified nature” and the companies
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`were not manufacturers. Id. at 1550. In regard to the present case, the previously assigned examining
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`attorney submitted websites showing goods that sell both cosmetics and supplements that use CBD or
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`hemp. Therefore, the Board should consider and give greater weight to the substantive, on-point, and
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`relevant evidence submitted in this case over the third-party registrations submitted by the Applicant.
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`Assuming arguendo that the third-party registrations are sufficient evidence, only two of the
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`cited registrations refer to hemp or CBD and the corresponding coexisting mark does not. See Response
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`to Office action, TSDR p. 22-269. For example, U.S. Registration Number 6240479 for PHENOM in
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`International Class 5 contains the following identification: “Anti-inflammatory salves; Dietary and
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`nutritional supplements; Medicated oils containing therapeutic oils; Medicated skin care preparations;
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`all the foregoing containing CBD derived from hemp with a delta-9 tetrahydrocannabinol concentration
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`of not more than 0.3 percent on a dry weight basis”, which includes CBD and hemp. See id. at 90.
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`However, the coexisting mark PHENOM for Reg. No. 4947092 for “Cosmetic sunscreen preparations;
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`Cuticle conditioners; Cuticle removing preparations; Nail care kits comprising nail polish; Nail care
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`preparations; Nail care preparations, namely, nail softeners; Nail cream; Nail enamel removers; Nail
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`enamels; Nail glitter; Nail grooming products, namely, tips, glue, lacquer and glitter; Nail hardeners; Nail
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`polish; Nail polish base coat; Nail polish protector in the nature of a thin plastic covering applied to nails;
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`Nail polish remover; Nail polish top coat; Nail primer; Nail repair products, namely, nail wraps; Nail
`
`strengtheners; Non-medicated lip care preparations; Non-medicated skin care preparations; Skin
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`

`

`cleansers” in International Class 3 does not include hemp or CBD. Id. at 87. This is also true for U.S.
`
`Registration Number 5307613 TREE OF LIFE for, in relevant part, “Dietary and nutritional supplements;
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`Dietary supplements also containing hemp seed oil; Dietary supplements consisting primarily of
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`cannabidiol oil derived from industrial hemp; . . . Nutritional supplements consisting primarily of
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`cannabidiol oil derived from industrial hemp” in International Class 5. Id. at 148. The coexisting mark for
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`TREE OF LIFE for U.S. Registration Number 5987134 is for “Cosmetics; Non-medicated skin serums; Skin
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`cleansers; Skin masks; Skin toners; Non medicated skin care preparations for use in reducing the appears
`
`of scars; Cosmetic preparations for skin care; Skin creams; Non-medicated cleansers for personal use,
`
`namely, facial cleansers; Non-medicated cleansers for personal use, namely, skin cleansers; Anti-wrinkle
`
`creams; Age spot reducing creams; Anti-aging cleanser; Anti-aging creams; Anti-aging moisturizer; Anti-
`
`aging toner” in International Class 3. 2 Id. at 145. Neither of the pairs of coexisting marks both contain
`
`CBD or hemp in the identification. Therefore, the registrations do not show that Applicant’s and
`
`Registrant’s marks should coexist on the register based on these particular goods.
`
`As the evidence of record shows, there is a significant overlap in the trade channels and classes
`
`of consumers for Applicant’s and Registrant’s goods. For these reasons, the du Pont factor concerning
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`the relatedness of the goods, and the similarity of the trade channels and classes of purchasers, weigh in
`
`favor of finding a likelihood of confusion.
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`CONCLUSION
`
`Applicant’s mark and Registrant’s mark are highly similar in terms of appearance, sound, and
`
`overall commercial impression, and the goods and services are closely related and travel through the
`
`same trade channels to the same classes of consumers. Accordingly, consumers are likely to mistakenly
`
`
`2 U.S. Registration Number 5915570 contains the term “HEMP” in the owner’s name but neither CBD nor hemp
`appears in the identification. Response to Office action, TSDR p. 240-41.
`
`

`

`believe that Applicant’s and Registrant’s goods emanate from the same source. For these reasons, the
`
`trademark examining attorney respectfully requests that the refusal to register Applicant’s mark under
`
`Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), be affirmed.
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`
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`Respectfully submitted,
`
`/Tasha Pulvermacher/
`
`Tasha Pulvermacher
`
`Examining Attorney
`
`Law Office 125
`
`(571) 272-4349
`
`Tasha.Pulvermacher@uspto.gov
`
`
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`
`
`Heather Biddulph
`
`Managing Attorney
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`Law Office 125
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`571-272-8190
`
`Heather.Biddulph@uspto.gov
`
`

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