ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1372769
`07/23/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Garrett Gutierrez
`
`Individual
`
`Incorporated or
`registered in
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`UNITED STATES
`
`606 S. HILL STREET, SUITE 606
`LOS ANGELES, CA 90014
`UNITED STATES
`
`ANNA RADKE
`BRAND COUNSEL
`401 PARK AVE S
`10TH FL
`NEW YORK, NY 10016
`UNITED STATES
`Primary email: anna@brandcounselpc.com
`Secondary email(s): manoj@brandcounselpc.com, jody@brandcounselpc.com,
`emma@brandcounselpc.com
`No phone number provided
`
`Docket no.
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`Registration subject to cancellation
`
`Registration no.
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`6206145
`
`Registration date
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`11/24/2020
`
`Register
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`Registrant
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`Principal
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`Evo Design LLC
`1369 MAIN STREET
`WATERTOWN, CT 06795
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 021. First Use: Sep 26, 2020 First Use In Commerce: Sep 26, 2020
`All goods and services in the class are subject to cancellation, namely: Floor brushes, carpet brushes
`and brushes for household use; pads for household cleaning, pads of metal for household cleaning
`
`Grounds for cancellation
`
`Mark never used in commerce
`
`Trademark Act Section 14(6)
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`

`

`Attachments
`
`072324 Petition to Cancel SCRUBI FINAL OPTIMIZED2.pdf(4694653 bytes )
`
`Signature
`
`/Anna Radke/
`
`Name
`
`Date
`
`Anna Radke
`
`07/23/2024
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the matter of Registration No. 6206145
`
`For the mark SCRUBI
`
`Issued November 24, 2020
`
`
`Garrett Gutierrez,
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`Petitioner,
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`Cancellation No.:
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`vs.
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`Evo Design LLC,
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`Respondent.
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`PETITION TO CANCEL
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`Garrett Gutierrez, (“Petitioner”), an individual based in the United States, with an address at
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`606 S. Hill Street, Suite 606, Los Angeles, CA 90014, believes he is and will continue to be
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`damaged by continued U.S. Registration No. 6206145 for the design mark SCRUBI (“Respondent
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`Mark” or “SCRUBI Mark”) in connection with “Floor brushes, carpet brushes and brushes for
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`household use; pads for household cleaning, pads of metal for household cleaning” in
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`International Class 21 (“Respondent Registration”) owned by Evo Design LLC (“Respondent”),
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`1
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`and hereby petitions for cancellation on grounds of abandonment and non-use, pursuant to the
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`Lanham Trademark Act of 1946 (“Lanham Act”).
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`As grounds for this petition, Petitioner alleges as follows:
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`1. Petitioner is and has been in the business of selling various personal care products
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`since at least March 18, 2020. In connection with his business, Petitioner offers and sells goods
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`such as exfoliating cloths, exfoliating pads, loofahs for household purposes, bath sponges, bath
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`products, namely, loofah sponges, cleaning cloth, facial cleansing sponges, scrub sponges, body
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`lotion and other personal care products.
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`2. Petitioner has a bona fide intent to use the mark SCRUBI BY GOSHI in U.S.
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`commerce in connection with “Bath products, namely, loofah sponges; Bath sponges; Cleaning
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`cloth; Exfoliating cloths; Exfoliating pads; Facial cleansing sponges; Loofahs for household
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`purposes; Scrub sponges.”
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`3. On September 27, 2021, Petitioner filed a trademark application, Serial No.
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`97046751, for the SCRUBI BY GOSHI standard character mark in connection with “Bath
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`products, namely, loofah sponges; Bath sponges; Cleaning cloth; Exfoliating cloths; Exfoliating
`
`pads; Facial cleansing sponges; Loofahs for household purposes; Scrub sponges” in International
`
`Class 21 (“Petitioner Application”). Attached hereto as Exhibit A is a true and correct printout
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`from the United States Patent and Trademark Office (“USPTO”) electronic database reflecting the
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`pending Petitioner Application.
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`4. In the Nonfinal Office Action, dated June 28, 2022, and Final Office Action, dated
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`January 24, 2023 (the “Office Actions”), the USPTO cited the Respondent Registration against
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`the Petitioner Application asserting its position that registration of the Petitioner’s SCRUBI BY
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`GOSHI mark is likely to cause confusion with the Respondent’s SCRUBI Mark, thereby
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`2
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`interfering with the Petitioner Application and causing harm to Petitioner. Petitioner, therefore,
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`has a real interest in seeking cancellation of the Respondent Registration and the entitlement to a
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`statutory cause of action to bring this action. Attached hereto as Exhibit B is a true and correct
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`copy of the Office Actions.
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`5. Further, Petitioner has taken substantial steps towards using his SCRUBI BY
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`GOSHI mark in connection with the relevant goods, including conducting research related to
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`product development. In view of these steps, Petitioner is significantly invested and has a real
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`interest in the SCRUBI BY GOSHI mark.
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`6. Petitioner’s intent for SCRUBI BY GOSHI is to be used in connection with a more
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`affordable product line than his famous GOSHI brand.
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`7. In fact, Petitioner obtained a registration for the GOSHI mark in standard
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`characters, U.S. Registration No. 6168638, on October 6, 2020 (“GOSHI Registration”). GOSHI
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`Registration was issued in connection with “Exfoliating cloths; Exfoliating pads; Loofahs for
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`household purposes; Bath sponges; Bath products, namely, loofah sponges; Cleaning cloth;
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`Facial cleansing sponges; Scrub sponges” in International Class 21. Attached hereto as Exhibit C
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`is a true and correct copy from the USPTO electronic database reflecting GOSHI Registration.
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`8. Petitioner’s registered GOSHI mark is a famous house mark for its namesake
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`personal care brand, GOSHI. GOSHI brand has been featured in major media, including Byrdie,
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`CNN, Complex, GQ and Hypebeast, among others. Petitioner has invested substantial resources
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`into developing the products under the brand, which are available for sale at major retailers such
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`as Amazon, Walmart, Ideana and Brain Dead. Attached hereto as Exhibit D is evidence that the
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`GOSHI mark is famous within the meaning of Lanham Act § 43(c), 15 U.S.C. § 1125(c).
`
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`9. Respondent, Evo Design LLC, is a domestic limited liability company registered in
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`3
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`the United States in the State of Connecticut with an address at 1369 Main St, Watertown, CT
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`06795.
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`10. On June 5, 2018, Respondent filed a trademark application, Serial No. 87948524,
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`to register the SCRUBI mark in International Class 3 in connection with “all-purpose cleaning
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`preparations; cleaning agents; impregnated cleaning pads; bleaching preparations; polishing,
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`scouring and abrasive preparations; soaps; cleaning solutions; cleaning sprays; cleaning foams;
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`cleaning powders; disposable wipes impregnated with cleaning chemicals or compounds,” and in
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`International Class 21 in connection with “brushes (except paint brushes); floor brushes; articles
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`for cleaning purposes; pads for cleaning; pads of metal for cleaning; cleaning cloths; cleaning
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`sponges” (“Respondent Application”). Respondent filed the Respondent Application based on its
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`alleged intent-to-use the SCRUBI Mark under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051.
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`Attached hereto as Exhibit E is a true and correct copy of the Respondent’s Application.
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`11. Subsequently, on April 20, 2020, the USPTO amended Respondent Application,
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`deleting International Class 3 goods, and maintaining the International Class 21 identification for
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`“Floor brushes, carpet brushes and brushes for household use; pads for household cleaning, pads
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`of metal for household cleaning,” which was the basis for the registration at issue in this
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`proceeding. Attached hereto as Exhibit F is a true and correct copy of Examiner’s Amendment.
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`12. Thereafter, on October 5, 2020, Respondent submitted a Statement of Use to amend
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`the filing basis to use-in-commerce under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051.
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`Attached hereto as Exhibit G is a true and correct copy of Respondent’s Statement of Use.
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`13. In the Respondent’s Statement of Use filed on October 5, 2020, Respondent
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`represented to the USPTO that Respondent was actively using the SCRUBI Mark in U.S.
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`commerce in connection with “Floor brushes, carpet brushes and brushes for household use; pads
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`4
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`for household cleaning, pads of metal for household cleaning.”
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`14. On November 24, 2020, the USPTO issued a U.S. Registration, No. 6206145, for
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`the Respondent Mark.
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`GROUNDS FOR CANCELLATION –
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`ABANDONMENT AND NONUSE
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`15. Between June 27, 2023, and now, Petitioner has thoroughly searched the following
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`online databases: Google, Twitter, Instagram, Facebook, eBay, Amazon, Walmart, Home Depot,
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`and Respondent’s website, https://www.evodesign.com, to ascertain whether Respondent has used
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`the SCRUBI Mark in commerce.
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`16. The search revealed that Respondent has not used or discontinued the use of the
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`SCRUBI Mark in connection with all goods identified in the Respondent’s Registration. On
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`information and believe, Respondent intends not to resume use of the SCRUBI mark in U.S.
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`commerce in connection with all the goods identified in the Respondent Registration. Accordingly,
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`Respondent has abandoned the SCRUBI Mark in connection with all goods, and the Respondent
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`Registration is subject to cancellation pursuant to 15 U.S.C. § 1064(3).
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`17. As a further basis for cancellation, because Respondent was not using the SCRUBI
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`Mark in connection with any of the goods identified in the Respondent Registration as of July 21,
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`2023, the last day Respondent could have alleged use in connection with the Respondent
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`Application based on an intent-to-use, the Respondent Registration is void ab initio.
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`18. As a result of his comprehensive investigation conducted between June 27, 2023,
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`and now, attached hereto as Exhibit H, Petitioner has found that the specimen’s website is currently
`
`defunct. Attached hereto as Exhibit I, Petitioner found ICANN records of the domain shown on
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`the specimen, www.getrugrenew.com, and the domain was created on September 24, 2020. The
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`5
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`specimen was created two days later on September 26, 2020, as shown on the Statement of Use
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`attached hereto as Exhibit G. Attached hereto as Exhibit J, Petitioner found that while the specimen
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`was created prior to the date when the Respondent submitted the Statement of Use, the evidence
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`suggests that the Respondent specifically intended (in the enclosed robots.txt webpage code) for
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`contents of the website to be obscured from public view, which contradicts its assertion of use of
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`the Respondent Mark in commerce. Attached hereto as Exhibit K, per the Internet Archive’s
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`Wayback Machine, the Respondent’s domain has been completely defunct since at least December
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`5, 2021.
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`19. Additionally, Exhibit L attached hereto shows that the Respondent Mark is absent
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`from the Respondent’s portfolio on its official website, www.evodesign.com. This suggests that
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`the finished product was never released to the market.
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`WHEREFORE, Petitioner respectfully prays that its cancellation be sustained, and that
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`Respondent’s Registration No. 6206145 be cancelled.
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`[SIGNATURE PAGE FOLLOWS]
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`Respectfully submitted,
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`BRAND COUNSEL, P.C.
`
`By: /Anna Radke/
`
` Anna Radke
`401 Park Ave South, 10th Fl.
`New York, NY 10016
`(213) 985-3804
`anna@brandcounselpc.com
`
`Manoj N. Shah
`177 E. Colorado Blvd, 2nd Fl.
`Pasadena, CA 91105
`213) 985-3804
`manoj@brandcounselpc.com
`
`Attorneys for Petitioner
`
`7
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`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`7/16/24, 12:44 PM
`
`Trademark Status & Document Retrieval
`
`For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking for, and a screenshot of any error
`messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2024-07-16 12:43:54 EDT
`
`Mark: SCRUBI BY GOSHI
`
`US Serial Number: 97046751
`
`Filed as TEAS Plus: Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing Date: Sep. 27, 2021
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`Currently TEAS Plus: Yes
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the minimum
`filing requirements) and that this application has been assigned to an examiner.
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`Status: An Office action suspending further action on the application has been sent (issued) to the applicant. To view all documents in this file,
`click on the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Jul. 20, 2023
`
`Mark Information
`
`Mark Literal Elements: SCRUBI BY GOSHI
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`Claimed Ownership of US
`Registrations:
`
`6168638
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`For: Bath products, namely, loofah sponges; Bath sponges; Cleaning cloth; Exfoliating cloths; Exfoliating pads; Facial cleansing sponges;
`Loofahs for household purposes; Scrub sponges
`
`International Class(es): 021 - Primary Class
`
`U.S Class(es): 002, 013, 023, 029, 030, 033, 040, 050
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`Class Status: ACTIVE
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`Basis Information (Case Level)
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`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
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`Filed 44E: No
`
`Filed 66A: No
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`Filed No Basis: No
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`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`https://tsdr.uspto.gov/#caseNumber=97046751&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`1/3
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`

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`7/16/24, 12:44 PM
`Current Owner(s) Information
`
`Trademark Status & Document Retrieval
`
`Owner Name: Gutierrez, Garrett
`
`Owner Address: 838 N. Edinburgh Avenue
`Los Angeles, CALIFORNIA UNITED STATES 90046
`
`Legal Entity Type:
`
`INDIVIDUAL
`
`Citizenship: UNITED STATES
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`Attorney/Correspondence Information
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`Attorney of Record
`
`Attorney Name: Manoj N. Shah
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`Attorney Primary Email
`Address:
`
`Correspondent
`
`manoj@brandcounselpc.com
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`Attorney Email Authorized: Yes
`
`Correspondent
`Name/Address:
`
`Manoj N. Shah
`Brand Counsel, P.C.
`1019 E. 4TH PLACE, 4TH FLOOR
`LOS ANGELES, CALIFORNIA UNITED STATES 90013
`
`Correspondent e-mail: anna@brandcounselpc.com
`manoj@brandcounselpc.com
`jody@brandcounselpc.com
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Feb. 05, 2024
`
`Jul. 20, 2023
`
`Jul. 20, 2023
`
`Jul. 20, 2023
`
`Apr. 24, 2023
`
`Apr. 24, 2023
`
`Jan. 24, 2023
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`Jan. 24, 2023
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`Jan. 24, 2023
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`Dec. 29, 2022
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`Dec. 28, 2022
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`Dec. 28, 2022
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`Jun. 28, 2022
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`Jun. 28, 2022
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`Jun. 28, 2022
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`Jun. 27, 2022
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`Oct. 26, 2021
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`Sep. 30, 2021
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`Description
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`Proceeding Number
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`SUSPENSION CHECKED - TO ATTORNEY FOR ACTION
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`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
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`LETTER OF SUSPENSION E-MAILED
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`SUSPENSION LETTER WRITTEN
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`APPLICATION EXTENSION GRANTED/RECEIPT
`PROVIDED
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`APPLICATION EXTENSION TO RESPONSE PERIOD -
`RECEIVED
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`NOTIFICATION OF FINAL REFUSAL EMAILED
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`FINAL REFUSAL E-MAILED
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`FINAL REFUSAL WRITTEN
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`TEAS/EMAIL CORRESPONDENCE ENTERED
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`CORRESPONDENCE RECEIVED IN LAW OFFICE
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`TEAS RESPONSE TO OFFICE ACTION RECEIVED
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`NOTIFICATION OF NON-FINAL ACTION E-MAILED
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`NON-FINAL ACTION E-MAILED
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`NON-FINAL ACTION WRITTEN
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`ASSIGNED TO EXAMINER
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`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
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`NEW APPLICATION ENTERED
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`TM Staff and Location Information
`
`TM Staff Information
`
`TM Attorney: ANGOTTI, SALVATORE JOH
`
`Law Office Assigned: LAW OFFICE 108
`
`File Location
`
`https://tsdr.uspto.gov/#caseNumber=97046751&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
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`2/3
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`7/16/24, 12:44 PM
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`Trademark Status & Document Retrieval
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`Current Location: TMEG LAW OFFICE 108
`
`Date in Location: Feb. 05, 2024
`
`Assignment Abstract Of Title Information - Click to Load
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`Proceedings - Click to Load
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`https://tsdr.uspto.gov/#caseNumber=97046751&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
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`3/3
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`

`

`EXHIBIT B
`EXHIBIT B
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`

`

`To:
`Subject:
`Sent:
`Sent As:
`Attachments:
`
`Gutierrez, Garrett (manoj@brandcounselpc.com)
`U.S. Trademark Application Serial No. 97046751 - SCRUBI BY GOSHI - N/A
`June 28, 2022 03:44:40 PM
`ecom108@uspto.gov
`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. 97046751
`
`Mark: SCRUBI BY GOSHI
`
`Correspondence Address:
`MANOJ N. SHAH
`1019 E. 4TH PLACE, 4TH FLOOR
`LOS ANGELES, CA 90013
`
`
`Applicant: Gutierrez, Garrett
`
`Reference/Docket No. N/A
`
`Correspondence Email Address:
` manoj@brandcounselpc.com
`
`
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` 
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`NONFINAL OFFICE ACTION
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`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 28, 2022
`
`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.
`
`SUMMARY OF ISSUES:
`Section 2(d) Refusal- Likelihood of Confusion
`
`

`

`
`SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 6206145. Trademark
`Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
`
`Applicant has applied for the mark SCRUBI BY GOSHI for “Bath products, namely, loofah sponges; Bath sponges; Cleaning cloth; Exfoliating
`cloths; Exfoliating pads; Facial cleansing sponges; Loofahs for household purposes; Scrub sponges” in Class 021.
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be
`confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of
`confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,
`177 USPQ 563, 567 (C.C.P.A. 1973) (called the “ du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747
`(Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of
`similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
`Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
`
`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.
`
`Similarity of the Marks
`
`The applicant has applied for the mark SCRUBI BY GOSHI. The cited mark SCRUBI is owned by Evo Design LLC.
`
`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).
`
`When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in
`terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the
`parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph
`Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of
`the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
`1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas
`Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir.
`2019); TMEP §1207.01(b).
`
`In the present case, applicants mark merely adds wording to the registered mark SCRUBI. Adding a term to a registered mark generally 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
`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 and
`BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and
`VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO
`COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
`
`Relatedness of the Goods and/or Services
`
`The applicant’s goods are “Bath products, namely, loofah sponges; Bath sponges; Cleaning cloth; Exfoliating cloths; Exfoliating pads; Facial
`cleansing sponges; Loofahs for household purposes; Scrub sponges” in Class 021. The registrant’s goods are “Floor brushes, carpet brushes and
`
`

`

`brushes for household use; pads for household cleaning, pads of metal for household cleaning” in Class 021.
`
`The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am.
`Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898
`(Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are
`such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v.
`Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
`1724 (TTAB 2007)); TMEP §1207.01(a)(i).
`In the present case, all goods at issue are products for use in the household, particularly in the bathroom and for scrubbing, and are often sold
`together in the same store departments, by the same companies, generally procured by the same class of consumer. It is likely that the consuming
`public would mistake the source of one good and/or service for the source of the other.
`The applicant will note the attached copies of third-party web sites. These sites demonstrate that applicant’s and registrant's goods and/or
`services are commonly found in the same channels of trade and frequently purchased by the same consumers. For example:
`· https://www.naturalbathbody.com/Sea-Sponges-for-Sale.html
`· https://fuller.com/collections/personal-care
`· https://www.anthropologie.com/search?q=scrub
`
`The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from
`adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690
`(Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP
`§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper
`Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
`Accordingly, the registrant's goods and/or services and the applicant's goods and/or services are highly related for purposes of determining the
`likelihood of confusion by consumers. Given the similarity of the marks and the relatedness of the goods and/or services, applicant's mark must
`be refused.
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in
`support of registration.
`RESPONSE GUIDELINES
`
`For this application to proceed, applicant must explicitly address each refusal and/or 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(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.
`
`
`
`/Salvatore J Angotti/
`Examining Attorney
`Law Office 108
`571-272-8945
`Salvatore.Angotti@uspto.gov
`
`
`

`

`
`
`RESPONSE GUIDANCE
`Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by
`the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen
`circumstances could affect an applicant’s ability to timely respond.
`
`
`
`
`
`Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an
`attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic
`applicant. If applicant has an attorney, the response must be signed by the attorney.
`
`
`If needed, find contact information for the supervisor of the office or unit listed in the signature block.
`
`

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`Gutierrez, Garrett (manoj@brandcounselpc.com)
`U.S. Trademark Application Serial No. 97046751 - SCRUBI BY GOSHI - N/A
`June 28, 2022 03:44:42 PM
`ecom108@uspto.gov
`
`To:
`Subject:
`Sent:
`Sent As:
`Attachments:
`
`
`
`United States Patent and Trademark Office (USPTO)
`
` 
`
`USPTO OFFICIAL NOTICE
`
` 
`
`Office Action (Official Letter) has issued
`
`on June 28, 2022 for
`
`U.S. Trademark Application Serial No. 97046751
`
` 
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office
`action in order to avoid your application abandoning.  Follow the steps below.
`
` 
`
`(1)  Read the Office action.  This email is NOT the Office action.
`
` 
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response
`must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your
`application will be abandoned.  See the Office action itself regarding how to respond.
`
` 
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your
`application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).
`
` 
`
`After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in
`the Office action.
`
` 
`
` 
`
`GENERAL GUIDANCE
`· Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid
`missing critical deadlines.
`
`  ·
`
` Update your correspondence email address to ensure you receiv