UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/478548
APPLICANT: YVES SAINT LAURENT PARFUMS
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CORRESPONDENT ADDRESS: MARK I. PEROFF, ESQ. TM & PATENT COUNSELORS OF AMERICA 915 BROADWAY NEW YORK, NEW YORK 10010
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: TEINT ECLAT DE SOIE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1037.0013
CORRESPONDENT EMAIL ADDRESS:
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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 76/478548
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. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2290555 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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/services, 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/services. The overriding concern is to prevent buyer confusion as to the source of the goods/services. 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 proposed mark is closely related to the prior registered mark in each of the five factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. The applicant’s mark is TEINT ECLAT DE SOIE. The registrant’s mark is TEING LIFT ECLAT. The marks share the common foreign terms TEINT and ECLAT. The overall commercial impression of the marks is created by these shared terms.
In addition the goods/services of the parties are closely related. The goods/services 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/services 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 applicant offers foundations, compact powders, face powders, blushes and cheek blushers; the registrant offers makeup foundation. The goods are overlapping. Consumers, therefore, are likely to believe that the goods/services of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. The applicant may, however, offer evidence in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities:
The applicant has filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and on a foreign registration under Section 44(e), 15 U.S.C. §1126(e). The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application. The applicant must advise the examining attorney, however, if the applicant intends to rely solely on the foreign registration as the basis for registration.
Unless the applicant indicates otherwise, this Office will presume that the applicant wishes to rely on Section 1(b) as well as on Section 44(e) as the bases for registration. In this case, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.
The applicant must submit a translation of the mark to permit proper consideration of the application. 37 C.F.R. §2.61(b); TMEP §809.
The applicant must insert a disclaimer of TEINT in the application because it is descriptive of the goods. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). The examining attorney believes the term means “dye” in French. See attached screenshot from www.babelfish.altavista.com. The applicant’s goods contain dye.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use TEINT apart from the mark as shown.
Applicant’s Response
No set form is required for response to this Office action. The applicant must respond to each point raised. Additional information is available on-line at the Patent and Trademark Office site on the global computer network. The site is located at WWW.USPTO.GOV.
/wgb/
William Breckenfeld
Trademark Attorney
Law Office 113
703-308-9113 x158 Phone
703-746-8113 Fax
ecom113@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.