UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/459988
APPLICANT: Streams LLC
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CORRESPONDENT ADDRESS: JEFFREY B. LANE THE LANE LAW FIRM 3102 OAK LAWN AVE STE 700 DALLAS TX 75219-4293
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom113@uspto.gov
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MARK: STREAMS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: jefflane@lane-law-firm.com |
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.
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Serial Number 76/459988
The assigned examining attorney has reviewed the referenced application and determined the following.
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. 2516656 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). If the goods of the parties differ, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755 (TTAB 1977).
The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).
The applicant seeks to register “STREAMS” for use on its goods. The cited registration is for the mark “MENARDO STREAM.”
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). In the application at hand, the applicant's mark is similar in sound, appearance and meaning to the registrant’s mark.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
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’s goods are:
• Bath crystals, bath gel, bath oil, skin soaps, body powder, perfume, cologne, hair shampoo, body creme, hand creme, skin lotions, skin care products, sachets.
•Candles, scented candles.
• Candle holders; table-top ornaments made of glass, crystal, china or porcelain; decanters; cosmetic brushes; bath brushes; body puffs; powder puffs; bath accessories including soap dishes and dispensers for liquid soap; decorative containers for bath accessories; decorative boxes not made of precious metal.”
The goods to which the registered mark is applied are:
• Soaps in liquid or solid form for the hands, face and body; deodorant soaps, disinfectant soap and medicated soap, shampoos, body shampoos; perfumes; essential oils for personal use; cosmetics, namely face and body powders, face and body creams, rouges, masks, cleansing milk, mascara, nail polish, nail varnish, nail remover, wet pack cosmetic pastes, cosmetic dyes, cosmetic compacts, face and eye make-up, face and eye make-up remover, implements for applying eye and lip liner, namely, lipstick, and eye line brushes, eyebrow pencils, eye liner pencils, lip liner pencils, false eyelashes, false eyelash adhesives, adhesives and greases used for cosmetic purposes, lipsticks, lip gloss, cotton sticks and cotton wool used for cosmetic purposes, cosmetic balls, cosmetic pads, cosmetic pencils, and cosmetic kits containing one or more of the foregoing; skin care preparations namely lotions and creams; hair lotions namely hair sprays, hair conditioners, hair tonics, styling gels, brilliantine, pomade, styling foams, mousses, hair dyes, hair rinses and hair bleaches; deodorants for personal use, sanitary preparations namely toiletries, namely toilet soap, eau de toilette, dentifrice, denture polishes, denture cleaners, degreasers, bath oils, face and body gels, shampoos, toilet waters, talcum powder, shaving lotions, shaving creams, moisture lotions, cold cream, hygienic cream, cleansing cream, hand cream, sunscreen cream, foundation cream, lip cream, massage creams, depilatory preparations in liquid and cream form; dentifrice; bleaching preparations for laundry use; scouring and abrasive preparations namely abrasive paper.
• Medicated skin cream.
• Eyebrow scissors, eyelash curlers.
• Cosmetic pencil sharpeners.
• Eyelash and eyebrow brushes and combs, cosmetic removing paper, non-woven fabric cosmetic wipes, cosmetic brushes; cosmetic lip brushes and eyeline brushes.
Here, both the applicant’s goods and the registrant’s goods contain a wide variety of cosmetic products, many of which overlap.
Thus, the examining attorney finds the applicant’s products to be so related to the registrant’s goods that it is likely that consumers will be confused as to the origin of the goods. Registration is refused because of a likelihood of confusion with Registration No. 76459988.
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.
Concerns regarding the applicant's identification will be addressed seriatim.
The applicant has identified its class 3 goods as “bath crystals, bath gel, bath oil, skin soaps, body powder, perfume, cologne, hair shampoo, body creme, hand creme, skin lotions, skin care products, sachets.”
Please note, “skin care products” is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods. If accurate, the applicant may consider amending this portion of its identification to “non-medicated skin care preparations.”
The applicant has identified its class 4 goods as “candles, [and] scented candles.” This is acceptable.
The applicant has identified its class 21 goods as “candle holders; table-top ornaments made of glass, crystal, china or porcelain; decanters; cosmetic brushes; bath brushes; body puffs; powder puffs; bath accessories including soap dishes and dispensers for liquid soap; decorative containers for bath accessories; decorative boxes not made of precious metal.”
“Candle holders” is unacceptable because the applicant has failed to specify the composition of the goods. If accurate, the applicant may consider amending this to “candle holders not of precious metal.”
“Bath accessories including soap dishes and dispensers for liquid soap” is unacceptable because the applicant has used the indefinite term “including.” The applicant must amend its identification to remove the indefinite term and replace it with “namely.”
“Decorative containers for bath accessories” is unacceptable because the applicant has failed to specify the composition of the goods. The applicant must amend its identification to so specify. If accurate, the applicant may consider amending its identification to “non-metal decorative containers for bath accessories.”
Amendment Guidelines
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. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.
The Acceptable Identification of Goods and Services Manual may be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600). See notice at 1190 TMOG 67 (Sept. 17, 1996). The applicant is advised that the Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
/John T. Lincoski/
Trademark Attorney
Law Office 113
(703)308-9113 ext. 286