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  76/423172

 

This letter responds to the applicant's communication filed on March 25, 2004.

 

Trademark Act Section 2(d) Refusals:

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 2,698,557; 2,698,558; 2,701,070; 2,705,187 and 2,765,321   as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusals under Section 2(d) are maintained and made FINAL.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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 and the similarity of the goods. 

 

The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

 

The applicant has applied to register the mark “MAKESENSE,” in typed form, for cosmetics; namely, foundations, highlighters, and concealers.

 

The cited registered marks are “IFF MAKES SCENTS,” in typed form, for, in part, fragrances and essential oils for use in the manufacture of the following products - colognes; cosmetics, namely lipsticks, lip oil, face powder, cake rouge, liquid rouge, mascara, cake make-up, eyebrow pencils, eye shadow and nail care products; skin care products, namely lotions, gels, oils, mousses, scented body sprays, bath foams, moisturizers, creams and facial masques; skin tanning products, namely lotions, sunscreens, gels, oils, mousses, sprays, foams and creams; hair care products, namely shampoos, rinses, gels, foams, conditioners and sprays; detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners; “WE MAKE SCENTS,” in typed form, for, in part, fragrances and essential oils for use in the manufacture of the following products - colognes; cosmetics, namely lipsticks, lip oil, face powder, cake rouge, liquid rouge, mascara, cake make-up, eyebrow pencils, eye shadow and nail care products; skin care products, namely lotions, gels, oils, mousses, scented body sprays, bath foams, moisturizers, creams and facial masques; skin tanning products, namely lotions, sunscreens, gels, oils, mousses, sprays, foams and creams; hair care products, namely shampoos, rinses, gels, foams, conditioners and sprays; detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners; “IFF MAKES SENSE,” in typed form, for, in part, fragrances and essential oils for use in the manufacture of the following products - colognes; cosmetics, namely, lipsticks, lip oil, face powder, cake rouge, liquid rouge, mascara, cake make-up, eyebrow pencils, eye shadow and nail care products; skin care products, namely lotions, gels, oils, mousses, scented body sprays, bath foams, moisturizers, creams and facial masques; skin tanning products, namely lotions, sunscreens, gels, oils, mousses, sprays, foams and creams; hair care products, namely shampoos, rinses, gels, foams, conditioners and sprays; detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners; “WE MAKE SENSE,” in typed form, for, in part, fragrances and essential oils for use in the manufacture of the following products - colognes; cosmetics, namely lipsticks, lip oil, face powder, cake rouge, liquid rouge, mascara, cake make-up, eyebrow pencils, eye shadow and nail care products; skin care products, namely lotions, gels, oils, mousses, scented body sprays, bath foams, moisturizers, creams and facial masques; skin tanning products, namely lotions, sunscreens, gels, oils, mousses, sprays, foams and creams; hair care products, namely shampoos, rinses, gels, foams, conditioners and sprays; detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners; and “WE MAKE SENSE,” in typed form, for chemicals and fragrances for the manufacture of-- colognes, cosmetics, namely, lipsticks, lip oil, face powder, cake rouge, liquid rouge, mascara, cake make-up, eyebrow pencils, eye shadow and nail care products; skin care products, namely lotions, gels, oils, mousses, scented body sprays, bath foams, moisturizers, creams and facial masques, skin tanning products, namely, lotions, sunscreens, gels, oils, mousses, sprays, foams and creams; hair care products, namely shampoos, rinses, gels, foams, conditioners and sprays, detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners.

 

In response to the applicant’s argument that the proposed mark is a single word, the examining attorney notes that on the specimen of record both the “M” in the word “make” and the “S” in the word “sense” are capitalized thereby creating the impression of two words, “Make” and “Sense.”

 

The applicant also argues that it is the owner of a family of marks ending in “SENSE”.  However, each case is decided on its own facts, and each mark stands on its own merits.  AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978); In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). 

 

In the case at hand, the applicant’s mark is very similar in overall commercial impression to the marks in each of the cited registrations.  When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. 

 

The applicant maintains that confusion is unlikely because the applicant’s mark is associated with “finished products” whereas the registrant’s goods are “used in the manufacture of various cosmetics.”  (Emphasis omitted). 

 

Note that the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq. The goods 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).  TMEP §1207.01(a)(i). 

 

The cited registrant’s goods are, in fact, closely related to the goods offered under the proposed mark.  Moreover, because the word “cologne” in the International Class 3 goods in U.S. Registration Nos. 2,698,557; 2,698,558; 2,701,070 and 2,705,187 is actually followed by a semicolon, everything following “cologne” would be interpreted as goods independent of the “fragrances and essential oils language” and, therefore, like the applicant’s goods are finished products. 

 

In addition, the examining attorney refers to the attached sampling of third party registrations in which the marks have been registered for use on both chemicals and essential oils used in manufacturing other products and a variety of personal care and beauty products.  These printouts have probative value to the extent that they serve to suggest that the goods listed therein, 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). 

 

Consumers seeing the proposed mark, “MAKESENSE,” used simultaneously with any of the cited marks, “WE MAKE SENSE,” “IFF MAKES SENSE,” “IFF MAKES SCENTS,” “WE MAKE SCENTS” and “WE MAKE SENSE,” are likely to mistakenly conclude that the goods are related and originate from a common source.  Accordingly, for the foregoing reasons, the refusal under Trademark Act Section 2(d) must be maintained and made FINAL.

 

Final Refusal Response Guidelines:

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone: (703) 308-9106 ext. 221

Fax:  (703) 746-8106 (formal responses)

 

 

 

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 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.