VIA UPS OVERNIGHT DELIVERY
FOLLOWED BY ELECTRONIC MAIL TRANSMISSION TO:
ecom107@USPTO.GOV
August 14, 2003
Mr. Robert H. Coggins, Examining Attorney
Law Office 107
Office of the Commissioner for Trademarks
2900 Crystal Dr.
Arlington, VA 22202 - 3513
Re: Response to Office Action Dated February 18, 2003
Serial No. 76/ 451290
Filing Date: Sept. 19, 2002
Mark: Maxine and Design
Applicant: Maxine Ltd.
Dear Mr. Coggins,
Thank you for the Office Action dated February 18, 2003. As you know, I
represent Maxine, Ltd., the applicant for the above-referenced trademark
(the "Applicant"). The application seeks to register the Trademark in each
of two (2) international classes.
I have reviewed the office action with the Applicant. As discussed in my
telephone conversation with you on February 20, 2003, the Applicant has
agreed to withdraw its application as to International Class 003 (Cosmetics)
only. However, the Applicant wishes to proceed with the application to
register "Maxine and Design" as to Class 044 (Beauty Services).
As required by the Office Action, the Applicant hereby withdraws its
disclaimer of the name Maxine.
As requested by the Office Action, the Applicant hereby withdraws its claim
of acquired distinctiveness from the record.
Because the Applicant is withdrawing its application as to International
Class 003 (Cosmetics), no response is made to the Office Action's comments
regarding Identification of Goods.
As requested by the Office Action, the Applicant hereby amends its
application to replace the word "including", as used in the definition of
services, with the word "namely". The amended definition of services will
now read as follows:
Beauty services, namely, body, hair and skin care services; hair cut, hair
color, permanent wave, hair relaxer, hair straightening, and styling
services; manicure, pedicure, and sculpted nail services; and massage
services; in class 44.
The Applicant does not seek registration of the mark "Maxine and Design" in
any class other than Class 44, for which registration was sought in the
original application. The Applicant submits that the application to
register the mark "Maxine and Design", as amended by this letter,
specifically identifies the services in the only class for which
registration is sought; that the proper filing fee for such class was
submitted with the original application; that the date of first use and
first use in commerce for this class, along with appropriate specimens, were
submitted in the original application; and that the Applicant submitted the
appropriate affidavit with the original application.
Because the application for registration in Class 003, as to Cosmetics, is
being withdrawn, and because the only registration now sought is for
services, no response is made to the Office Action's request for additional
specimens of use on goods.
We hope that you will find this information satisfactory, and proceed with
registration of the trademark "Maxine and Design" in International Class
044, for beauty services.
We appreciate your assistance. If you have questions, or require any
additional changes or information, please call the undersigned at 773/ 725 -
4349 or correspond via email to pazenlaw@ameritech.net.
I hereby certify that this correspondence is being transmitted by electronic
mail to the United States Patent and Trade Mark Office on August 14, 2003,
with an additional copy forwarded via UPS overnight delivery to the address
above on the same date.
Very truly yours,
/Thea M. Pazen/
cc: Maxine Kroll, President, Maxine Ltd.
----- Original Message -----
From: <ecom107@USPTO.GOV>
To: <pazenlaw@Ameritech.Net>
Sent: Tuesday, February 18, 2003 6:14 PM
Subject: TRADEMARK APPLICATION NO. 76451290 - MAXINE - Thea M. Paze
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/451290
APPLICANT: Maxine Ltd.
CORRESPONDENT ADDRESS:
THEA M. PAZEN
3839 N. KENNETH AVE. SUITE 300
CHICAGO, IL 60641-2815
RETURN ADDRESS:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513
ecom107@uspto.gov
MARK: MAXINE
CORRESPONDENT'S REFERENCE/DOCKET NO: Thea M. Paze
CORRESPONDENT EMAIL ADDRESS:
pazenlaw@ameritech.net
Please provide in all correspondence:
1. Filing date, serial number, mark and
applicant's name.
2. Date of this Office Action.
3. Examining Attorney's name and
Law Office number.
4. Your telephone number and e-mail address.
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 76/451290
The assigned examining attorney has reviewed the referenced application and
determined the following:
Similar Mark Found
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 cosmetics, so resembles the mark in
U.S. Registration No. 2570023 (MAXINE LEVINE) 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. The examining attorney looks 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). The examining attorney also compares 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 registrant's mark is MAXINE LEVINE for "cosmetics, namely, mascara."
The applicant's mark is a stylized MAXINE for "cosmetics, namely-- make-up;
body, hair and skin care products; beauty treatments; hair color, permanent
wave, hair relaxer, hair straightening and hair styling treatments;
manicure, pedicure, and sculpted nail products; and skin and body care
treatments."
Since the identification of the applicant's goods ("make-up") is very broad,
it is presumed that the application encompasses all goods of the type
described, including those in the registrant's more specific identification,
that they move in all normal channels of trade and that they are available
for all potential customers. TMEP §1207.01(a)(iii). Additionally, the
applicant's other goods are highly related to the registrant's mascara.
The applicant's mark removes the second name LEVINE from the registrant's
mark.
Cosmetic designers frequently use both their full name and simply their
first name to identify their cosmetic goods. See the attached
cosmetic-related registrations showing such use of the first and full names
of Ralph Lauren and Estee Lauder.
The marks in their entireties convey similar commercial impressions: a woman
named Maxine.
The mere deletion of a term from a registered mark may not be sufficient to
overcome a likelihood of confusion under Section 2(d). Coca-Cola Bottling
Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A.
1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann
Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) ("THE LILLY" and "LILLI
ANN"); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) ("MACHO"
and "MACHO COMBOS"); In re United States Shoe Corp., 229 USPQ 707 (TTAB
1985) ("CAREER IMAGE" and "CREST CAREER IMAGES"); In re Corning Glass Works,
229 USPQ 65 (TTAB 1985) ("CONFIRM" and "CONFIRMCELLS"); In re Riddle, 225
USPQ 630 (TTAB 1985) ("ACCUTUNE" and "RICHARD PETTY'S ACCU TUNE"); In re
Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) ("HEAD START" and
"HEAD START COSVETIC"). TMEP §1207.01(b)(iii).
Although the applicant's mark includes a simple design element (shaded
rectangle with the name MAXINE underlined), when a mark consists of a word
portion and a design portion, the word portion is more likely to be
impressed upon a purchaser's memory and to be used in calling for the goods
or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco
Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976). TMEP §1207.01(c)(ii).
Because of the similarity between the parties' marks and goods, a likelihood
of confusion exists, and the examining attorney must refuse registration
under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
The Applicant May Respond
Although the examining attorney has refused registration, the applicant may
respond to the refusal to register by submitting evidence and arguments in
support of registration.
If the applicant chooses to respond to the refusal to register, the
applicant must also respond to the following issues.
Disclaimer
No disclaimer of the name "Maxine" is necessary. The applicant must
withdraw the disclaimer from the record. TMEP § 1213.01(a).
Acquired Distinctiveness
It is unclear why the applicant claims acquired distinctiveness under §2(f).
Such a claim appears unnecessary in light of the inherent distinctiveness of
the mark. The applicant should withdraw the claim from the record. TMEP §
1212.02(d).
Identification of Goods
The applicant must amend the identification to specify the common commercial
name of the identified goods. If there is no common commercial name, the
applicant must describe the product and its intended uses. TMEP §1402.
The wording "body, hair and skin care products," "beauty treatments,"
"manicure, pedicure, and sculpted nail products," and "skin and body care
treatments" is unacceptable as indefinite.
The identification of services is indefinite because the applicant uses the
wording "including." The recitation must be all-inclusive. The applicant
should amend the identification to replace this wording with "namely."
If accurate, the applicant may use:
Cosmetics, namely, make-up; body, hair and skin soaps, moisturizers,
conditioners, and lotions; hair color, permanent wave, hair relaxer, hair
straightening and hair styling preparations; manicure, pedicure, and
sculpted nail care preparations; in class 3;
Medicated skin care preparations; in class 5;
Manicure sets; in class 8;
Hair brushes; in class 21; and/or
Beauty services, namely, body, hair and skin care services; hair cut, hair
color, permanent wave, hair relaxer, hair straightening, and styling
services; manicure, pedicure, and sculpted nail services; and massage
services; in class 44.
For your convenience, the Trademark Acceptable Identification of Goods and
Services Manual is available on the Office's web site at
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
<http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/> . The Manual includes
explanations and notices of classification policy, and provides examples of
acceptable identifications.
Please note that, while an application may be amended to clarify or limit
the identification, additions to the identification are not permitted. 37
C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to
include any goods that are not within the scope of goods set forth in the
present identification.
Additional Classes for Use Application
If the applicant prosecutes this application as a combined, or
multiple-class, application based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the
following:
(1) The applicant must specifically identify the goods/services in each
class and list the goods/services by international class with the classes
listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of
goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1)
and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee
for filing a trademark application is $335 for each class. This applies to
classes added to pending applications as well as to new applications filed
on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each
class that includes goods or services based on use in commerce under
Trademark Act Section 1(a). The dates of use must be at least as early as
the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and
the specimen(s) must have been in use in commerce at least as early as the
filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or
in connection with all the goods or services specified in each class that
includes goods or services based on a bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), where such statement was not
included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R.
§2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and
2.71(c).
Specimens Unacceptable for Goods
While the specimens are acceptable for the suggested class 44 servcies
(above) they are unacceptable as evidence of actual trademark use for goods
because they are a catalogue of services, a gift certificate, and a salon
appointment card: they do not show use of the mark on any goods or packaging
therefor.
The applicant must submit one specimen per class showing the mark as used in
commerce. 37 C.F.R. Section 2.56. Examples of acceptable specimens are
tags, labels, instruction manuals, containers or photographs that show the
mark on the goods or packaging.
The applicant must verify, with an affidavit or a declaration under 37
C.F.R. Section 2.20, that the substitute specimens were in use in commerce
at least as early as the filing date of the application. Jim Dandy Co. v.
Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a);
TMEP section 905.10.
Pending an adequate response to the above, the examining attorney refuses
registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. Sections
1051, 1052, 1053 and 1127, because the record does not show use of the
proposed mark as a trademark.
Telephone Calls
If the applicant has any questions or needs assistance in responding to this
Office action, please telephone the assigned examining attorney.
Fee Increase Effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark
registration will be increased to $335.00 per International Class. The
USPTO will not accord a filing date to applications that are filed on or
after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an
additional class or classes of goods/services will be $335.00 per class.
A Final Rule amending the Rules of Practice in Trademark Cases to provide
for this fee increase was published in the Federal Register on November 27,
2002 (67 Fed. Reg. 70,847 (2002)).
http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov
/2002/02-30086.htm
<http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.go
v/2002/02-30086.htm> .
/Robert H. Coggins/
Attorney-Advisor
Law Office 107
U.S. Patent and Trademark Office
ecom107@uspto.gov
703-308-9107 ext. 111
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
<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
<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/ <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
<http://www.gov.uspto.report/main/trademarks.htm>
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE
ASSIGNED EXAMINING ATTORNEY.
Serial Number
76293962
Status
REGISTERED
Word Mark
MAXINE LEVINE
Registration Number
2570023
Date Registered
2002/05/14
Type of Mark
TRADEMARK
Register
PRINCIPAL
Mark Drawing Code
(1) TYPED DRAWING
Owner
SECOND STREET ENTERPRISES, INC. CORPORATION CALIFORNIA 3633 BROADWAY SUITE
101 LONG BEACH CALIFORNIA 90803
Goods/Services
Class Status -- ACTIVE. IC 003. US 001 004 006 050 051 052. G & S:
Cosmetics, namely, mascara. First Use: 2001/07/27. First Use In Commerce:
2001/07/27.
Name/Portrait Statement
The name in the mark does not identify a living individual.
Filing Date
2001/08/06
Examining Attorney
WALLACE, SHAUNIA
Attorney of Record
MICHAEL DOLAND
Serial Number
73245104
Status
SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED
Word Mark
RALPH LAUREN
Registration Number
1222278
Date Registered
1983/01/04
Type of Mark
TRADEMARK
Register
PRINCIPAL
Mark Drawing Code
(1) TYPED DRAWING
Owner
Lauren and Mark N. Kaplan, co-trustees of the Ralph Lauren Trust of 9/21/76;
Ricky INDIVIDUAL UNITED STATES c/o Skadden, Arps, Meagher & Flom 919 Third
Avenue New York NEW YORK 10022
Goods/Services
Class Status -- ACTIVE. IC 003. US 051 052. G & S: Cologne, Aftershave,
Aftershave Balm, Antiperspirant, Toilet Soap, Personal Deodorant, Talcum
Powder, Toilet Water, Body Lotion, Bath Oil, Body Powder, Perfume, and
Dusting Powder. First Use: 1978/02/08. First Use In Commerce: 1978/02/08.
Prior Registration(s)
1021368
Name/Portrait Statement
"Ralph Lauren" is a living individual whose consent is of record.
Filing Date
1980/01/07
Examining Attorney
UNKNOWN
Attorney of Record
Philip H. Gottfried
Serial Number
76144118
Status
REGISTERED
Word Mark
RALPH
Registration Number
2503942
Date Registered
2001/11/06
Type of Mark
TRADEMARK
Register
PRINCIPAL
Mark Drawing Code
(1) TYPED DRAWING
Owner
PRL USA Holdings, Inc. CORPORATION DELAWARE 103 Foulk Road Suite 254
Wilmington DELAWARE 19803
Goods/Services
Class Status -- ACTIVE. IC 003. US 001 004 006 050 051 052. G & S: Skin
care preparations, namely, exfoliating body gel, body spray, bath and shower
gel, and body lotion. First Use: 2000/09/15. First Use In Commerce:
2000/09/15.
Prior Registration(s)
1671467;1742330;1779435;1795974;1835393;1845305;2175394;2207011;2296547;2318
372;2338949;2363328;AND OTHERS
Name/Portrait Statement
The name "RALPH" identifies a living individual whose consent is of record.
Filing Date
2000/10/10
Examining Attorney
YAO, GRETTA
Attorney of Record
Lisa M Gigliotti
Serial Number
72366247
Status
REGISTERED AND RENEWED
Word Mark
ESTEE LAUDER
Registration Number
0950482
Date Registered
1973/01/09
Type of Mark
TRADEMARK
Register
PRINCIPAL
Mark Drawing Code
(3) DESIGN PLUS WORDS, LETTERS AND/OR NUMBERS
Owner
ESTEE LAUDER INC. CORPORATION DELAWARE 767 FIFTH AVENUE NEW YORK NEW YORK
10153
Goods/Services
Class Status -- ACTIVE. IC 003. US 051. G & S: PERFUMERY, COSMETICS AND
TOILET PREPARATIONS. First Use: 1956/05/01. First Use In Commerce:
1956/05/01.
Prior Registration(s)
0530305;0869503
Name/Portrait Statement
"ESTEE LAUDER" IS A LIVING INDIVIDUAL WHOSE CONSENT IS OF RECORD.
Filing Date
1970/07/27
Examining Attorney
UNKNOWN
Attorney of Record
LESLEY A. MORADIAN
Serial Number
72304069
Status
REGISTERED AND RENEWED
Word Mark
ESTEE
Registration Number
0869503
Date Registered
1969/05/13
Type of Mark
TRADEMARK
Register
PRINCIPAL
Mark Drawing Code
(5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Owner
ESTEE LAUDER INC. CORPORATION DELAWARE 767 FIFTH AVENUE NEW YORK NEW YORK
10022
Goods/Services
Class Status -- ACTIVE. IC 003. US 051. G & S: PERFUME AND TOILET WATER.
First Use: 1968/06/28. First Use In Commerce: 1968/06/28.
Filing Date
1968/08/01
Examining Attorney
UNKNOWN