Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	T.W.  Enterprises, Ltd.	:	BEFORE THE
Trademark:	CAPTIVATE	:	TRADEMARK TRIAL
Serial No:	76/016758	:	AND
Attorney:	Hugh D. Jaeger	:	APPEAL BOARD
Address:	Law Offices of Hugh D. Jaeger, PA 1000 Superior Blvd Suite 201 Waytata, Minnesota  55391-1873	:	ON APPEAL

 

 

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

 

 

                                              I.     STATEMENT OF THE CASE

 

Applicant appeals the examining attorney’s final refusal to register the proposed mark “CAPTIVATE” in typed form for “tanning lotions.”  The examining attorney refused registration on the Principal Register under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the ground the mark, when applied to the goods of the applicant, is likely to be confused with U.S. Registration No. 1988996 for “CAPTIVATE” in typed form for “bar soaps, liquid soaps, and hand and body lotions.”     

 

 

 

 

II.   FACTS

On April 4, 2000, the applicant, T.W. Enterprises, Ltd, applied to register the proposed mark “CAPTIVATE” in typed form, for “tanning lotions” on the Principal Register.  The application is based on Section 1(b) of the Trademark Act, 15 U.S.C. Section 1051(b). 

 

In the first Office Action mailed on September 21, 2000, the prior examining attorney refused registration of the mark under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), because the proposed mark when used with the relevant goods is likely to cause confusion with the registered mark “CAPTIVATE” for “bar soaps, liquid soaps, and hand and body lotions.”   

 

The applicant responded on March 16, 2001, and argued against the Section 2(d) refusal.  After reviewing the response, this examining attorney issued a final refusal maintaining the Section 2(d) refusal for Registration No. 1988996 in an Office Action dated August 9, 2001. 

 

 

On February 12, 2002, applicant filed a Notice of Appeal and Request for an oral hearing.  The applicant subsequently filed numerous extensions of time to file its brief which were granted by the Trademark Trial and Appeal Board.  On February 24, 2004, the Trademark Trial and Appeal Board responded to the applicant’s final request for an extension of time to file its appeal brief by granting the applicant 30 days to file its brief.  The applicant filed a timely appeal brief in addition to a request for an oral hearing. 

  

The single issue to be decided upon appeal is whether the proposed mark “CAPTIVATE” in typed form for “tanning lotions” is confusingly similar to the identical registered mark “CAPTIVATE” in typed form for “bar soaps, liquid soaps, and hand and body lotions.”      

 

 

III.ARGUMENT

 

THE APPLICANT’S PROPOSED MARK IS NOT ENTITLED TO REGISTRATION BECAUSE IT SO RESEMBLES THE CITED REGISTERED MARK AS TO BE LIKELY TO CAUSE CONFUSION, MISTAKE OR DECEPTION

 

In determining whether there is likelihood of confusion between the applied for mark and any registered mark, a two-prong test must be considered.  First a determination must be made as to whether the marks themselves are confusingly similar and second, the goods sold or services rendered under the respective marks must be compared.

 

 

 

A.     THE MARKS THEMSELVES ARE IDENTICAL

 

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression.  Similarity in any one of these elements is sufficient to indicate a likelihood of confusion.  In re Mack, 197 USPQ 755(TTAB 1977). 

 

The applicant argues that the wording “CAPTIVATE” is a suggestive term in relationship to the goods, and therefore, entitled to a limited scope of protection, and that the courts have recognized that descriptive and weak terms are entitled to a more narrow scope of protection.  The examining attorney agrees that the wording is suggestive, however, but argues the term is neither descriptive nor weak.  In testing for likelihood of confusion under Sec. 2(d), the number and nature of similar marks in use on similar goods must be considered.  TMEP section 1207.01. 

 

The Trademark Registrer contains only six registered marks using the wording “Captivate,” with the cited registered mark U.S. Registration No. 1988996, being the only one within International Class 3.  The remaining five marks include marks for advertising services, computer services, and computer software, all totally unrelated to the goods of both the applicant and the registrant.  This evidence shows the strength of the wording for goods within International Class 3.  In addition, there are only 17 other marks with a variation of the term “Captivate,” including the wording Captivator, Captivations, or Captivating on the entire Trademark Register.  All 17 of these marks are for goods and services which are also totally unrelated to those of the applicant and registrant, including shoes, cigars, fishing lures, parlor games, books regarding cats, coffee, candy, and printed recipes, to name a few.

 

Even if the applicant would have shown that the cited mark is “weak,” which the examining attorney argues the applicant has not done, such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services.  See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.

 

The applicant also argues that the proposed mark CAPTIVATING, Serial No. 78/187047, for “perfumes, colognes, and after shave lotions,” that was filed after the mark of the applicant, however, approved for publication over the registered mark, shows the limited scope of protection of the root word CAPTIV* for goods in International Class 3.  Third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks.  In re Comexa Ltda, 60 USPQ2d 1118 (TTAB 2001); National Aeronautics and Space Admin. v. Record Chem. Co., 185 USPQ 563 (TTAB 1975); TMEP §1207.01(d)(iii).  Further, existence on the Register of other confusingly similar marks would not assist applicant in registering yet another mark which so resembles the cited registered mark that confusion is likely.  In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).

 

In the applicant’s Summary, the applicant states that “there must be a likelihood of confusion, not the mere possibility thereof, to warrant refusal under Section 2(d).  The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion.  It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990), and cases cited therein.  See also In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984).

 

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

B.     THE GOODS OF BOTH PARTIES ARE CLOSELY RELATED

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).  As noted previously, the marks of the registrant and of the applicant are identical. 

 

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

 

The applicant argues the goods of the parties differ and that the cited registration does not including tanning lotions.  The goods of the parties are very similar and related.  The prior examining attorney as well as this examining attorney has attached numerous copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods of those of the applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods, namely tanning lotions versus bar soaps, liquid soaps, and hand and body lotions, are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  Toilet preparations and cosmetics of this type are sold through the same trade channels to the same class of purchasers.  They are goods of the same descriptive properties which cannot be questioned.  It seems apparent that the use of the same mark on such closely related goods would be likely to cause confusion or mistake or deception. 

 

The applicant argues that tanning lotions would be sold in surf shops, swimwear shops, and souvenir shops, which typically do not sell soaps, liquid soaps, or body lotions.  The applicant continues stating that even if the goods were both sold in drug stores or grocery stores, they would not be confused because they would be sold in different sections of the stores.  Likelihood of confusion is determined on the basis of the goods identified in the application and registration.  If the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).

 

When products are inexpensive and subject to impulse purchase, purchasers are held to a lesser standard of purchasing care and thus are considered more likely to be confused as to the source of the goods.  Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc., v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).  Products such as soaps, hand and body lotions, and tanning lotions would be held to a lesser standard since considered lower priced goods. 

 

The applicant argues that the typical purchasers of the registrant’s goods would be more women shoppers, therefore, sophisticated purchasers, who would not likely confuse the body products.  The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

 

 

  

 

II.   CONCLUSION

 

 

For the foregoing reasons, the Board should affirm the refusal, pursuant to Trademark Act Section 2(d), to register applicant’s mark CAPTIVATE, for “tanning lotions” on the ground that the mark is likely to cause consumer confusion with the registered mark CAPTIVATE for “soaps, liquid soaps, and hand and body lotions.”     

 

 

Respectfully submitted,

 

 

 

 

Judy Grundy

Trademark Attorney

Law Office 106

 

 

 

Mary Sparrow

Managing Attorney

Law Office 106