throbber
To:
`Subject:
`Sent:
`Sent As:
`
`MAREK KRIZKA(office@tramatm.com)
`U.S. Trademark Application Serial No. 98052004 - LAW OF NATURE
`October 17, 2024 03:50:22 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-osmosisbeauty-com-products-digestive-support-17291887486671
`screencapture-osmosisbeauty-com-collections-wellness-17291887797641
`screencapture-osmosisbeauty-com-collections-makeup-17291888149021
`screencapture-tula-com-products-balanced-beauty-skin-gummies-30-day-supply-
`17291890419951
`screencapture-tula-com-products-radiant-skin-brightening-serum-skin-tint-spf-30-
`17291891327901
`screencapture-www-perriconemd-com-c-supplements-17291897917771
`screencapture-www-perriconemd-com-c-collections-no-makeup-skincare-17291898141861
`screencapture-grandecosmetics-com-products-travel-size-grandegummies-vegan-collagen-
`booster-gummy-17291911697351
`screencapture-grandecosmetics-com-products-copy-of-grandelipstick-plumping-lipstick-
`17291912048481
`5301709
`7342582
`5801901
`5863947
`6775601
`6761622
`6893401
`7010657
`7375123
`7140988
`7439254
`3950930
`7185911
`4851298
`6874994
`4780439
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  98052004
`
`Mark:   LAW OF NATURE
`
`Correspondence Address:  
`MAREK KRIZKA
`SPARRING LEGAL LLP
`477 MADISON AVENUE, 6TH FLOOR
`NEW YORK NY 10022
`
`

`

`UNITED STATES
`
`Applicant:   Law Of Nature LLC
`
`Reference/Docket No.  N/A
`
`Correspondence Email Address:   office@tramatm.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   October 17, 2024
`
`Introduction
`
`Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3). The trademark examining
`attorney has carefully reviewed applicant’s request and determined the request did not: (1) raise a new
`issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard
`to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light
`on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`Accordingly, the Section 2(d) refusal made final in the Office action dated April 23, 2024 is maintained
`and continued.  See TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`
`Summary of Issues
`
`
`•
`
`Section 2(d) - Likelihood of Confusion Refusal
`
`
`Section 2(d) - Likelihood of Confusion Refusal
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
`U.S. Registration No. 5112850. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
`§§1207.01 et seq. 
`
`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.
`
`Applicant has applied to register the mark LAW OF NATURE in stylized text for “Dietary and
`nutritional supplements for promoting digestion; Dietary supplements for humans; Food supplements;
`Health food supplements; Natural dietary supplements; Nutritional supplements; Vitamin and mineral
`supplements; Weight management supplements” in International Class 005.
`
`Registrant’s mark is LAWS OF NATURE COSMETICS in stylized text with a design for “Cosmetics”
`in International Class 003.
`
`Similarity of the Marks
`
`Marks are compared in their entireties for similarities in appearance, sound, connotation, and
`commercial impression.  In re Charger Ventures LLC, 64 F.4th 1375, 1380, 2023 USPQ2d 451, at *3
`(Fed. Cir. 2023) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101
`USPQ2d 1713, 1720 (Fed. Cir. 2012); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
`Fondee En 1772, 396 F.3d 1369, 1371-72, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)); TMEP
`§1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks
`confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re
`Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921
`(Fed. Cir. 2019); TMEP §1207.01(b).
`
`Here, applicant’s mark,  LAW OF NATURE, is confusingly similar to the registered mark,  LAWS OF
`NATURE COSMETICS.  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 Viterra Inc., 671 F.3d
`1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);  In re Nat’l Data Corp., 753 F.2d 1056, 1058,
`224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is
`descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant
`when comparing marks.    See  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050
`(Fed. Cir. 2018) (citing  In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed.
`Cir. 1997));  Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *41 (TTAB 2022); TMEP
`§1207.01(b)(viii), (c)(ii).  In the registered mark, the term COSMETICS is disclaimed, leaving LAWS
`OF NATURE as the dominant element of the mark. 
`
`Further, the pluralization of LAWS in the registered mark does not obviate the similarity between the
`marks.  An applied-for mark that is the singular or plural form of a registered mark is essentially
`identical in sound, appearance, meaning, and commercial impression, and thus the marks are
`confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015)
`(holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are
`confusingly similar”);  Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355
`(TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark)
`(citing  Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no
`material difference between the singular and plural forms of ZOMBIE such that the marks were
`considered the same mark).  Thus, the phrases LAW OF NATURE and LAWS OF NATURE are
`confusingly similar. 
`
`

`

`
`Finally, the differing designs are not enough to make the two marks distinct from one another.  When
`evaluating a composite mark consisting of words and a design, the word portion is normally accorded
`greater weight because it is likely to make a greater impression upon purchasers, be remembered by
`them, and be used by them to refer to or request the goods and/or services.    In re Viterra Inc., 671 F.3d
`1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting  CBS Inc. v. Morrow, 708 F.2d 1579,
`1581-82, 218 USPQ 198, 200 (Fed. Cir. 1983));  Made in Nature, LLC v. Pharmavite LLC, 2022
`USPQ2d 557, at *41 (TTAB 2022) (quoting  Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at
`*31 (TTAB 2021)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties,
`the word portion is often considered the dominant feature and is accorded greater weight in determining
`whether marks are confusingly similar, even where the word portion has been disclaimed.    In re Viterra
`Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing  Giant Food, Inc. v. Nation’s Foodservice, Inc.,
`710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).   Because the wording is confusingly
`similar, the marks as a whole are confusingly similar. 
`
`In the April 8, 2024 Response, applicant argued that the distinctive design of each mark makes the
`marks distinguishable to consumers.  See  Response, p. 3. However, as mentioned above,  the word
`portions of the marks are nearly identical in appearance, sound, connotation, and commercial
`impression; therefore, the addition of a design element does not obviate the similarity of the marks in
`this case.    See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993);
`TMEP §1207.01(c)(ii).  Therefore, this argument is not persuasive.
`
`Applicant also argued that the term COSMETICS, though disclaimed, adds something to the
`commercial impression of the registered mark.  See  Response, p. 4. However, in this case, because
`COSMETICS is generic for registrant's goods, consumers would likely see registrant's mark as merely
`the cosmetics line of the larger LAWS OF NATURE brand.  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)).  Thus, even if the word changes the commercial
`impression of registrant's mark in the eyes of consumers, it would only be to understand what goods
`registrant is offering. Thus, this argument is not persuasive. 
`
`In the October 9, 2024 Request for Reconsideration, applicant argues that the wording of the marks is
`weak, meaning that consumers would "pay special attention" to the other elements of the marks, such
`as the design. Request for Reconsideration, p. 3. Applicant asserts that the marks are comprised of a
`commonly used phrase that is suggestive of the quality of the products. See  Request for
`Reconsideration, p. 3. However,  Trademark Act Section 7(b) provides that a certificate of registration
`on the Principal Register is prima facie evidence of the validity of a registered mark.  15 U.S.C.
`§1057(b); see SoClean, Inc. v. Sunset Healthcare Sols., Inc., 52 F.4th 1363, 1369, 2022 USPQ2d 1067,
`at *3 (Fed. Cir. 2022) (“The presumption of validity is not conditional; the statute provides that a
`certificate of registration ‘shall’ result in the presumption, without specifying any exceptions.”).  The
`validity of a cited registration “cannot be challenged in an ex parte proceeding.”  In re Fat Boys Water
`Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016).  Thus, applicant’s argument is not being
`considered because to do so would fail to give the cited registered mark the validity to which it is
`entitled.  In re Fat Boys Water Sports LLC, 118 USPQ2d at 1517 (citing In re Fiesta Palms LLC, 85
`USPQ2d 1360, 1363 (TTAB 2007)).  Thus, this argument is not persuasive. 
`
`Applicant again argues the dissimilarity of the visual characteristics of the marks, saying that the marks
`are both highly stylized in distinct ways. See Request for Reconsideration, p. 4. Applicant asserts that
`the marks must be compared in their entirety to determine whether consumers are likely to confuse
`
`

`

`them, which includes taking into account the stylization and the disclaimed matter. See Request for
`Reconsideration, pp. 4-5.  However, a trademark examining attorney may weigh the individual
`components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903
`F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there
`is nothing improper in stating that . . . more or less weight has been given to a particular feature of a
`mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting
`In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985))).  In this case, the
`close similarity in the wording between the marks outweighs any stylistic differences. 
`
`Thus, because the marks  look and sound similar and create the same commercial impression, the marks
`are considered similar for likelihood of confusion purposes.
`
`Relatedness of the Goods
`
`The goods and/or services are compared to determine whether they are similar, commercially related,
`or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
`1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308
`F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
`
`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); see Made in Nature, LLC v. Pharmavite
`LLC, 2022 USPQ2d 557, at *44 (TTAB 2022) (quoting In re Jump Designs LLC, 80 USPQ2d 1370,
`1374 (TTAB 2006)).
`
`Here, applicant’s goods, “Dietary and nutritional supplements for promoting digestion; Dietary
`supplements for humans; Food supplements; Health food supplements; Natural dietary supplements;
`Nutritional supplements; Vitamin and mineral supplements; Weight management supplements,” are
`closely related to registrant’s goods, “cosmetics.”
`
`The attached third party Internet evidence from Osmosis, Tula, Perricone MD, and Grande Cosmetics,
`and the previously attached third party Internet evidence from Jane Iredale, Honest, and Beauty Pie
`establish that   the same entity commonly manufactures, produces, or provides the relevant goods and
`markets the goods under the same mark. Here, health and beauty companies commonly make
`supplements as well as various cosmetic products. Thus, applicant’s and registrant’s goods are
`considered related for likelihood of confusion purposes.    See, e.g.,  In re Davey Prods. Pty Ltd., 92
`USPQ2d 1198, 1202-04 (TTAB 2009);  In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69,
`1271-72 (TTAB 2009). 
`
`Further, the trademark examining attorney's currently attached and previously attached evidence from
`the USPTO’s XSearch database, consisting of a number 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, shows
`that the goods listed therein, namely cosmetics and 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).
`
`In the April Response, applicant argued that "[c]osmetics generally include makeup and skincare. They
`do not include dietary supplements." Response, p. 5. Further, applicant includes evidence from "some
`of the biggest cosmetics companies according to google," showing that such companies offer only
`cosmetics and not supplements. Response, p. 5. However,  the fact that the goods of the parties differ is
`not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between
`particular goods and/or services, but likelihood of confusion as to the source or sponsorship of those
`goods and/or services.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205
`(Fed. Cir. 2003);  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993);
`TMEP §1207.01.  Therefore, the fact that applicant and registrant do not offer overlapping goods is not
`dispositive in this case. 
`
`Applicant also asserted that there are "numerous instances" of the Board finding no likelihood of
`confusion in similar circumstances.  See  Response, p. 5. However, applicant provided no evidence of
`these circumstances. Thus, this argument is not persuasive. 
`
`Finally, applicant asserted that the goods travel in different trade channels because their goods are sold
`in pharmacies and the registrant's goods are sold in cosmetic stores.  See  Response, p. 5. However,
`neither party has limited their goods to any particular channels of trade in the respective identifications,
`so the goods are presumed to travel in all channels of trade normal for those goods, including
`pharmacies.  See  previously attached evidence from CVS pharmacy, showing both supplements and
`cosmetics.
`
`Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.
`
`Concurrent Use
`
`In the Request for Reconsideration, applicant argues that their mark has established a "clear brand
`identity" and has been coexisting with the registered mark since 2023. Request for Reconsideration, p.
`5. However, in a likelihood of confusion analysis,  “‘a showing of actual confusion is not necessary to
`establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744,
`1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64
`USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of
`confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047,
`1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of
`actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic
`Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).  Therefore, any prior
`coexistence of the parties' marks in commerce is not dispositive in this case.
`
`Conclusion
`
`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). Therefore, because the marks are similar, and the goods are
`related, there is a likelihood of confusion as to the source of applicant’s goods, and registration is
`refused pursuant to Section 2(d) of the Trademark Act. For the foregoing reasons, this refusal is now
`made final and the request for reconsideration is denied. 
`
`Response Guidelines
`
`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.
`
`
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal.   See TMEP §715.04(a).  
`
`If applicant has not filed an appeal and time remains in the response period for the final Office
`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).
`
`
`/Mary Becker/
`Mary Becker
`Trademark Examining Attorney
`Law Office 103
`(571) 270-3020
`Mary.Becker@uspto.gov
`
`
`
`

`

`

`

`

`

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`her mother to combatacid reflux, the message hit home;
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`evening before bed for a year - yes, changing the diet helps,
`but honestly, | do not see me doingthat at this stage of my
`life. After taking this product for now 2 weeks,| can say that
`it works exactly as she said it would.| take one capsule with
`each meal and thankfully | no longer deal with heartburn.
`I've also noticed that the frequent pain in my stomach has
`gone away. | wascertainly a skeptic when| started the
`product -but today,| can't imagine having a meal without
`taking a Digestive Support capsule.
`
`

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`Within the first month of taking the Tula gummies| noticed a
`positive difference in my hair and mynails. My nails are stronger
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`08/12/24
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`ie oe oe oe oe Musthave prebiotic gummies!
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`are nottoo big or chewy! My stomach/gut health seem

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