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  76/485467

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion

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 marks in U.S. Registration Nos. 2713600, 2633783, 2282007, 2297538, 1293726, 2500752 and 2502571 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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).  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).

 

Applying the above analysis to this application, the trademark attorney must first conclude that the marks are similar.  The registered mark contains as its dominant, literal, portion FRAICHE.  A direct translation of “Fraiche” is “fresh.”    Registrations 2713600 and 2633783 are for the mark FRESH.  According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  TMEP §1207.01(b)(vi).  Thus, because “fraiche” is “fresh” in English the marks are similar.

 

The remaining registrations each contain the wording FRAICHE.  The applicant’s entire literal portion is contained in the cited marks.  The shared wording in the marks, FRAICHE creates a similarity.

 

As to the second part of the test, the applicant provides a variety of cosmetic type goods.  Each of the registrants provide highly related, and often identical, cosmetics items.  Thus, the goods are related.

 

Therefore, because the marks are similar and the goods are related, there is a likelihood of confusion and registration must be refused.

 

Although registration has been refused, the applicant may respond to the refusal 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 informalities.

 

Translation

The applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. Section 2.61(b); TMEP section 809.

Identification of Goods

The wording in the identification of goods is unacceptable as indefinite.  The applicant must use common commercial names for the goods.  The applicant may amend this wording as follows:

“Perfumes,” is acceptable. 

“Aromatics,” is too vague.  The exact goods must be listed in common commercial terms.

“Air fresheners,” occur in class 5.

“Eau de cologne,” is acceptable.

For “essential oils,” the use is required.  The applicant may state “essential oils for personal use.”

For “Deodorants,” the applicant may state “personal deodorants.”

For  “hair remover, pomade” the nature of the goods must be described more clearly.  The applicant may state “hair removal cream; pomade cream.”

“Hair lotion, hair conditioner, hair setting foam and gel, hair color preparations, hair bleaches, face wash foam, skin lotion, skin milk, skin cream, cosmetics, lipstick and lip color preparations, anti-perspirant, shampoo, soaps, dentifrices; non-medicated bath preparations, namely, bath liquid, bath gel, bath powder, bath salt and bath tablets” is acceptable.

 

For the applicant's convenience, the Trademark Acceptable Identification of Goods and Services Manual on the internet at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ offers a searchable list of acceptable identifications and classifications.  When formulating and classifying identifications the Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification. 

 

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(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

 

 

 

 

/Daniel Capshaw/

Examining Attorney

Law Office 110

703-308-9110 ext. 241

ecom110@uspto.gov (formal responses only)

 

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.