| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76493505 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Dear Ms. Miller:
This communication is responsive to the Office Action dated March 21, 2005. Applicant respectfully submits the following response. I. INFORMALITIES A. Translation Pursuant to the Examiner's recommendation, Applicant amends the translation statement as follows: The English translation of the mark is THE DREAM. II. SUBSTANTIVE REFUSALS A. Likelihood of Confusion The Examiner had previously asserted that there may be a likelihood of confusion between Applicant's mark and the mark associated with Serial No. 76/369,453 (HAIR CLINIC REVE-21), and if the cited application matured into registration, the Examiner may refuse registration under § 2(d). The cited application has since matured into registration (U.S. Reg. No. 2,822,144), and Applicant respectfully submits that there is no likelihood of confusion between the two marks. Likelihood of confusion requires that confusion be probable, not simply possible See HMH Publishing Co. v. Brincat, 183 U.S.P.Q. 141, 144 (9th Cir. 1974); Fleishmann Distilling Corp. v. Maier Brewing Co., 136 U.S.P.Q. 508, 518 (9th Cir. 1963); J.B. Williams Co. v. Le Conte Cosmetics, Inc., 186 U.S.P.Q. 317, 319 (9th Cir. 1975). Applicant urges that there is no likelihood of confusion between the cited registration and Applicant's mark. Applicant's mark differs in sight, sound, and meaning, and is used in connection with distinguishable services. Thus, there is no likelihood of confusion and the present application should be allowed. 1. Different Marks Applicant's mark for LE REVE and the cited mark, HAIR CLINIC REVE-21 contain sufficiently distinguishable elements as to eliminate any likelihood of confusion that may be caused by the shared REVE term. As previously stated in prior responses, Applicant's term is presented with a highly stylized design element, reminiscent of a Picasso-style drawing or painting. Second, the cited mark presents an entirely different commercial impression through the inclusion of the HAIR CLINIC and "-21" components. "The use of identical even dominant words in common does not automatically mean that two marks are similar." General Mills, Inc. v. Kellog Co., 3. U.S.P.Q.2d 1442, 1445 (8th Cir. 1987). "Rather, in analyzing the similarities of sight, sound and meaning between two marks, a court must look at the overall impression created by the marks and not merely compare individual features." Id. In this case, significant differences exist in the way the two marks are presented, as well as the meaning associated with the marks as a whole. Applicant's mark, LE REVE, is a French term that the Examiner has requested be translated as "the dream." In comparison, Registrant's mark does not include any translation, and considering that Registrant is a Japanese corporation, Applicant can only guess as to what meaning was intended to be applied to the REVE term in the cited mark. Additionally, Applicant's mark includes a very artistic and distinctive font and stylized design, while the cited mark is essentially presented in standard font format. The fonts in the cited mark are simple and solid without the treatment afforded to Applicant's lettering. Similarly, the sound of the two marks differs as well. The two word LE REVE mark is significantly shorter, does not contain the HAIR CLINIC or "-21" terms, and is easily discernable from the four term HAIR CLINIC REVE-21 mark in spoken language. Lastly, Applicant also raised in prior responses the fact that the cited mark is a multi-word mark, and it is this mark as a whole that consumers identify with the services. Merely the similarity of one word in each of the marks at issue would not cause a likelihood of confusion when the mark is taken as a whole. As a whole, the two marks create entirely distinguishable commercial impressions. While the Registrant may have been required to disclaim HAIR CLINIC, the terms create a commercial impression that is very distinguishable from terms associated with Applicant's mark, like "Salon" or "Beauty." Consequently, this presents a commercial impression that is unique and distinguishable from Registrant's. Thus, Applicant respectfully submits that confusion is not probable, requests that this application receive favorable action. 2. Different Goods and Services According to the Trademark Manual of Examining Procedure, "[e]ven marks which are identical in sound or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion." See TMEP §1207.01(b)(i). The case law is supportive of this position. For example, CROSS-OVER for bras was held not likely to be confused with CROSSOVER for ladies sportswear." See In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987). Also, BOTTOMS UP for underwear was held not likely to be confused with BOTTOMS UP for clothing. See In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977). In this case, the cited mark has been registered in International Class 42 for scientific and technological services and research services, while Applicant seeks registration of its mark in International Class 44 for beauty salon and spa services. While Applicant is aware that while the purpose of classifying trademark registration serves more of an administrative function than substantive determination, the different classes in this case reveal significant differences in the services offered under each mark. The cited mark is used in connection with medical services associated with hair re-growth. The services are rendered in a hospital or clinic-like setting, and offered to "patients" rather than customers. While the procedure is considered cosmetic, it is still performed in a quasi-surgical manner, and presumably at a significant cost. To compare, Applicant's services will be offered in high-end beauty salons, and while they will clearly include a cosmetic purpose, do not relate in any manner to the services offered in connection with the cited mark. The TTAB has established that even if there is an overlap in the goods and services offered under two marks, where the overlap is de minimus, consumer confusion is unlikely to occur. See In re Coors Brewing Co., 68 U.S.P.Q.2d 1059, 1063-64 (CA FC 2003). III. CONCLUSION Therefore, as Applicant's mark conveys a different commercial impression and is associated with distinguishable services, consumers are unlikely to be confused between the marks. Confusion is not probable. In view of the foregoing, the Applicant respectfully requests that this application is in condition for publication and favorable action is requested.
Respectfully submitted,
GREENBERG TRAURIG
Dated: ________________________ By: __________________________ Lauri Thompson, Esq. 3773 Howard Hughes Parkway Suite 500 North Las Vegas, Nevada 89109 (702) 792-3773 |
|
| GOODS AND/OR SERVICES SECTION (no change) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Lauri S. Thompson/ |
| SIGNATORY NAME | Lauri S. Thompson |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 09/21/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 21 19:26:58 EDT 2005 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXX-20050 921192658106436-76493505- 200d6f99aecbcce463fcfeec8 0e394311b-N-N-20050921192 634501496 |
| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76493505 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
Dear Ms. Miller:
This communication is responsive to the Office Action dated March 21, 2005. Applicant respectfully submits the following response. I. INFORMALITIES A. Translation Pursuant to the Examiner's recommendation, Applicant amends the translation statement as follows: The English translation of the mark is THE DREAM. II. SUBSTANTIVE REFUSALS A. Likelihood of Confusion The Examiner had previously asserted that there may be a likelihood of confusion between Applicant's mark and the mark associated with Serial No. 76/369,453 (HAIR CLINIC REVE-21), and if the cited application matured into registration, the Examiner may refuse registration under § 2(d). The cited application has since matured into registration (U.S. Reg. No. 2,822,144), and Applicant respectfully submits that there is no likelihood of confusion between the two marks. Likelihood of confusion requires that confusion be probable, not simply possible See HMH Publishing Co. v. Brincat, 183 U.S.P.Q. 141, 144 (9th Cir. 1974); Fleishmann Distilling Corp. v. Maier Brewing Co., 136 U.S.P.Q. 508, 518 (9th Cir. 1963); J.B. Williams Co. v. Le Conte Cosmetics, Inc., 186 U.S.P.Q. 317, 319 (9th Cir. 1975). Applicant urges that there is no likelihood of confusion between the cited registration and Applicant's mark. Applicant's mark differs in sight, sound, and meaning, and is used in connection with distinguishable services. Thus, there is no likelihood of confusion and the present application should be allowed. 1. Different Marks Applicant's mark for LE REVE and the cited mark, HAIR CLINIC REVE-21 contain sufficiently distinguishable elements as to eliminate any likelihood of confusion that may be caused by the shared REVE term. As previously stated in prior responses, Applicant's term is presented with a highly stylized design element, reminiscent of a Picasso-style drawing or painting. Second, the cited mark presents an entirely different commercial impression through the inclusion of the HAIR CLINIC and "-21" components. "The use of identical even dominant words in common does not automatically mean that two marks are similar." General Mills, Inc. v. Kellog Co., 3. U.S.P.Q.2d 1442, 1445 (8th Cir. 1987). "Rather, in analyzing the similarities of sight, sound and meaning between two marks, a court must look at the overall impression created by the marks and not merely compare individual features." Id. In this case, significant differences exist in the way the two marks are presented, as well as the meaning associated with the marks as a whole. Applicant's mark, LE REVE, is a French term that the Examiner has requested be translated as "the dream." In comparison, Registrant's mark does not include any translation, and considering that Registrant is a Japanese corporation, Applicant can only guess as to what meaning was intended to be applied to the REVE term in the cited mark. Additionally, Applicant's mark includes a very artistic and distinctive font and stylized design, while the cited mark is essentially presented in standard font format. The fonts in the cited mark are simple and solid without the treatment afforded to Applicant's lettering. Similarly, the sound of the two marks differs as well. The two word LE REVE mark is significantly shorter, does not contain the HAIR CLINIC or "-21" terms, and is easily discernable from the four term HAIR CLINIC REVE-21 mark in spoken language. Lastly, Applicant also raised in prior responses the fact that the cited mark is a multi-word mark, and it is this mark as a whole that consumers identify with the services. Merely the similarity of one word in each of the marks at issue would not cause a likelihood of confusion when the mark is taken as a whole. As a whole, the two marks create entirely distinguishable commercial impressions. While the Registrant may have been required to disclaim HAIR CLINIC, the terms create a commercial impression that is very distinguishable from terms associated with Applicant's mark, like "Salon" or "Beauty." Consequently, this presents a commercial impression that is unique and distinguishable from Registrant's. Thus, Applicant respectfully submits that confusion is not probable, requests that this application receive favorable action. 2. Different Goods and Services According to the Trademark Manual of Examining Procedure, "[e]ven marks which are identical in sound or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion." See TMEP §1207.01(b)(i). The case law is supportive of this position. For example, CROSS-OVER for bras was held not likely to be confused with CROSSOVER for ladies sportswear." See In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987). Also, BOTTOMS UP for underwear was held not likely to be confused with BOTTOMS UP for clothing. See In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977). In this case, the cited mark has been registered in International Class 42 for scientific and technological services and research services, while Applicant seeks registration of its mark in International Class 44 for beauty salon and spa services. While Applicant is aware that while the purpose of classifying trademark registration serves more of an administrative function than substantive determination, the different classes in this case reveal significant differences in the services offered under each mark. The cited mark is used in connection with medical services associated with hair re-growth. The services are rendered in a hospital or clinic-like setting, and offered to "patients" rather than customers. While the procedure is considered cosmetic, it is still performed in a quasi-surgical manner, and presumably at a significant cost. To compare, Applicant's services will be offered in high-end beauty salons, and while they will clearly include a cosmetic purpose, do not relate in any manner to the services offered in connection with the cited mark. The TTAB has established that even if there is an overlap in the goods and services offered under two marks, where the overlap is de minimus, consumer confusion is unlikely to occur. See In re Coors Brewing Co., 68 U.S.P.Q.2d 1059, 1063-64 (CA FC 2003). III. CONCLUSION Therefore, as Applicant's mark conveys a different commercial impression and is associated with distinguishable services, consumers are unlikely to be confused between the marks. Confusion is not probable. In view of the foregoing, the Applicant respectfully requests that this application is in condition for publication and favorable action is requested.
Respectfully submitted,
GREENBERG TRAURIG
Dated: ________________________ By: __________________________ Lauri Thompson, Esq. 3773 Howard Hughes Parkway Suite 500 North Las Vegas, Nevada 89109 (702) 792-3773 |
|
| Response Signature | |
| Signature: /Lauri S. Thompson/ Date: 09/21/2005 | |
| Signatory's Name: Lauri S. Thompson | |
| Signatory's Position: Attorney for Applicant | |
| Serial Number: 76493505 | |
| Internet Transmission Date: Wed Sep 21 19:26:58 EDT 2005 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXX-20050921192658106436 -76493505-200d6f99aecbcce463fcfeec80e394 311b-N-N-20050921192634501496 |