Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/319183

 

On 2-19-03, action on this application was suspended pending the disposition of Application Serial No. 76010718.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2772020 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

The registered mark is ENVIRONNE for “among other things, bath and beauty condensed carbonated bath balls” and the applicant is seeking to register the mark ENVIRON and design for “skin soaps, essential oils for personal use, cosmetics and hair lotions.”  The marks are essentially phonetic equivalents.  Similarity in sound alone is sufficient to find a likelihood of confusion.  Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963).  TMEP §1207.01(b)(iv).  Moreover, the literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii). 

 

 In addition to the marks being confusingly similar, some of the applicant’s goods are highly related to the goods listed in the above-cited registration in that bath balls and skin soaps, essential oils for personal use, cosmetics, and hair lotions are sold in the same trade channels.  Consumers would likely believe that the goods emanate from one common source and associate the goods with the same producer.  Attached are 2 third party registrations in which bath balls and soaps, lotions, and oils are sold in the same trade channels.  In addition, the attached 2 copies of articles from the Internet, using yahoo.com, as of 12-2-03, show that bath balls are made with essential oils and they are also used to soften and exfoliate the skin.  

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/AMY GEARIN/

Trademark Attorney

LO 115

United States Patent and Trademark Office

(703) 308-9115 x294

ecom115@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.