Offc Action Outgoing

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  76/487954

 

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

 

Refusal of  Registration – Conflict with Prior Registrations

 

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. 1081467 and 1523104 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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.  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. 

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Similarity in any one of the elements of sight, sound and/or meaning is sufficient to find a likelihood of confusion.

 

Moreover, the goods and/or 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 and/or services come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §§1207.01(a) and 1207.01(b).   Conversely, if the goods or services of the respective parties are 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 or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(a)(i). 

 

The typed form SUNDOWN mark in the instant application is identical, in all respects, to the typed form SUNDOWN marks in each of the cited registrations, both of which issued to and are owned by the Johnson & Johnson Corporation.  The “preparations for application to the skin for purposes of moisturizing, tanning or screening from the sun” identified in the instant application are identical to the “SKIN CARE PREPARATIONS, NAMELY AFTER SUN SKIN MOISTURIZERS AND GELS” and “SUNTAN LOTION AND SUNSCREEN” identified in the cited registrations.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).   Given the identical nature of the goods of the parties and the  identical nature of the respective marks, it is likely that consumers would be confused as to the source or origin of the goods of the parties.  Hence, registration of the applicant’s mark is refused pursuant to Section 2(d) of the Trademark Act.

 

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.

 

Amendment to Identification and Classification of  Goods is Required

 

The identification of goods is unacceptable as indefinite because it does not make clear whether or not the goods are medicated.  In addition, the broadly identified goods encompass goods that may fall in more than one International Class.  Amendment is required. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.  The applicant may adopt any or all of the following suggested amended statements of goods, and the corresponding classifications of the same, if accurate:

 

SUNTANNING PREPARATIONS; SUN BLOCK AND SUN SCREEN PREPARATIONS; NON-MEDICATED SKIN MOISTURIZING LOTIONS in International Class 3;

 

MEDICATED AFTER-SUN SKIN CARE PREPARATIONS FOR USE IN MOISTURIZING AND TREATING SUNBURNED SKIN in International Class 5.

 

The applicant is advised that the Trademark Office Manual of Acceptable Identifications of Goods and Services, which includes the correct classifications of the listed goods and services, may be found online at http://www.uspto.gov.  The applicant may find this resource to be quite useful in framing an amended and acceptable identification of goods/services in this matter.

 

The applicant should bear in mind that brackets and parentheses shown in the identification manual are in the nature of directional signals, the significance of which is explained in the introduction to the Identification Manual.  Parentheses and brackets should not be included in the actual identification of goods or recitation of services adopted by the applicant. 

 

Please also 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 or services that are not within the scope of the goods and services recited in the present identification.  In addition, once an item has been deleted from an identification of goods or recitation of services, it normally cannot be reinserted.

 

Multiple Class Application Requirements

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must 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(a); 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.  

 

 

 

 

/Barbara Loughran/

Trademark Examining Attorney

Law Office 113

(703) 308-9113  ext 208

 

 

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.