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  76/453986

 

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 goods, so resembles the mark in U.S. Registration No. 1909106 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 NEW AGE for moisturizer.

 

The applicant’s mark is NU-AGE for “skin care, namely moisturizers, anti-aging creams, wrinkle creams, skin cleansers and cosmetics.”

 

The goods are identical: moisturizer.  The applicant’s other cosmetic goods are highly related to the registrant’s moisturizers.

 

Because the goods of the respective parties are identical and closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b).  Nonetheless, the marks are similar.

 

The marks are phonetic equivalents, and convey the same sound, meaning, and commercial impression.

 

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.

 

Drawing

 

The drawing is not acceptable because the mark is not typed entirely in capital letters.  37 C.F.R. §2.52(a)(1); TMEP §807.06.  The applicant must submit a new drawing.  If the applicant wishes to register the typed version of the mark, the applicant must submit a drawing on which the mark is typed entirely in capital letters.  If the applicant intends to show the mark in special form, the applicant must submit an acceptable special‑form drawing.  37 C.F.R. §2.52.

 

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.

 

 

 

 

/Robert H. Coggins/

Attorney-Advisor

Law Office 107

U.S. Patent and Trademark Office

 

ecom107@uspto.gov

703-308-9114 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 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

 

Serial Number

74433934

 

Status

SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED

 

Word Mark

NEW AGE

 

Registration Number

1909106

 

Date Registered

1995/08/01

 

Type of Mark

TRADEMARK

 

Register

PRINCIPAL

 

Mark Drawing Code

(1) TYPED DRAWING

 

Owner

PARLUX FRAGRANCES, INC. CORPORATION DELAWARE 3725 SW 30TH AVENUE FT. LAUDERDALE FLORIDA 33312

 

Name Change

BY ASSIGNMENT

 

Original Owner

REVLON CONSUMER PRODUCTS CORPORATION CORPORATION New York NEW YORK 10022

 

Goods/Services

Class Status -- ACTIVE.  IC 003.  US  001 004 006 050 051 052.  G & S: moisturizer.  First Use: 1994/01/18.  First Use In Commerce: 1994/01/18.

 

Prior Registration(s)

1621873

 

Filing Date

1993/09/10

 

Examining Attorney

HINES, CARYN