UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/511736
APPLICANT: Jackson International Trading Company, K ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: SATISFACTION
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CORRESPONDENT’S REFERENCE/DOCKET NO: TM/SATISFACT
CORRESPONDENT EMAIL ADDRESS: |
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 76/511736
This letter responds to the applicant’s communication filed on July 26, 2004.
For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No. 2775351. 37 C.F.R. §2.64(a).
The examining attorney initially refused 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. 2775351 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207.
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 applicant has applied to register the mark SATISFACTION for “adhesives for cosmetic use, skin lotions, ammonia for cleaning purposes, antiperspirants, artificial eyelashes, artificial fingernails, astringents for cosmetic purposes, body oils, body lotions, skin soaps, facial scrubs, talcum powder, hair shampoos, skin balms, skin creams, bath gels, bath salts, body masks, laundry bleach, hair bleaching preparation, bluing for laundry, blusher, makeup, breath freshener, bubble bath, floor buffing compound, carburetor and choke cleaning preparations, chrome polish, cologne, hair conditioners, cold creams, cosmetic compacts, cosmetic pencils, cotton for cosmetic purposes, cuticle removing preparations, shampoos, dentifrices, deodorants for personal use, laundry detergents, drain openers, hair dyes, emery boards, fabric softeners, food for flavorings being essential oils, lip gloss, non-medicated hair care preparations, incense, nail care preparations, oven cleaners, paint removers, chrome polish, furniture polish, nail polish, polymer sealants for cleaning, shining, and protecting automobile exterior surfaces, hair pomades, potpourri, rouge, rust removing preparations, sachets, saddle soap, sandpaper, spot remover, laundry starch, paint stripper, sun tanning preparations, cotton swabs for cosmetic purposes, wax stripping preparations, and pre-moistened cosmetic wipes, in Class 3; clothing, namely, anklet socks, parkas, anoraks, aprons, ascots, athletic footwear, athletic shoes, athletic uniforms, babushkas, baby bunting, ski boot bags, bandannas, bandeaus, head bands, neck bands, bathing suits, bathing caps, bathrobes, beach cover-ups, beach wear, bed jackets, clothing belts, berets, cloth bibs, bikinis, blazers, bloomers, blouses, blousons, boas, body shapers, body suits, boleros, bonnets, booties, boots, bottoms, bras, brassieres, breeches, underwear briefs, bustiers, caftans, camisoles, capes, clothing caps, cardigans, cassocks, chaps, chemises, clogs, coats, collars, competitor's numbers of textile, corselets, corsets, Halloween costumes, coveralls, cover-ups, cravats, creepers, cuffs, culottes, cummerbunds, cloth diapers, dickies, dresses, gowns, dungarees, dusters, earmuffs, espadrilles, foul weather gear, foundation garments, frocks, fur coats, gabardines, gaiters, galoshes, gauchos, foundation garment girdles, gloves, shirts, great coats shorts, gym suits, masquerade costumes and masks sold in connection therewith, halter tops, hats, head wear, heel inserts, hoods, hosiery, housecoats, infant wear, innersoles, inserts, jackets, jeans, jerseys, jodhpurs, jogging suits, jumpers, jumpsuits, kerchiefs, kilts, kimonos, kneehighs, knickers, leg warmers, leggings, leotards, lingerie,loungewear, maillots, mantillas, mantles, mittens, moccasins,mufflers, muffs, mukluks, muu muus, neck bands,neckerchiefs, neckties, neckwear, negligees, overalls,shoulder pads for clothing, pajamas, pantaloons, panties,pants, pantyhose, pareu, parkas, pedal pushers, peignoirs,pinafore, pocket squares, ponchos, pullovers, vests, rainwear, robes, rompers, rubbers, sandals, sarongs, sashes,scarves, shawls, shifts, shoes, skirts, ski wear, slacks,sleepwear, slippers, slips, smocks, sneakers, socks, innersoles, stockings, stoles, sun visors, suspenders, sweatbands, sweaters, t-shirts, tailleurs, tangas, tank tops,teddies, tennis wear, thermal wear, ties, tights; toe boxes,togas, tops, toques, tracksuits, trousers, tunics, turbans,tuxedos, underwear, uniforms, unitards, veils, visors, wraps,zori, in Class 25; and beer, malt beer, non-alcoholic beer, colas in the nature of soft drinks, fruit drinks, fruit juices, lemonade, mineral water, soda water, soft drinks flavored with tea, sports drinks and table water, in Class 32.”
The registered mark is PURE SATISFACTION for “body lotions, body powders, body oils, and body creams.”
Similarity of Marks
The terms SATISFACTION and PURE SATISFACTION are highly similar in sound, appearance and commercial impression. 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).
Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(i).
The entirety of applicant’s response centers on applicant’s ownership of a now-cancelled registration, which co-existed, briefly, with the registered mark.
However, applicant will note that prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office. Each case is decided on its own facts, and each mark stands on its own merits. AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978); In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
The fact that registrant’s mark registered while applicant’s prior to the cancellation of applicant’s prior registration has no bearing on the registrability of applicant’s present mark.
Both applicant’s and registrant’s marks contain the same dominant term, namely, SATISFACTION. Accordingly, the marks are similar.
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).
Both applicant and registrant provide various cosmetic lotions and creams. Thus, the goods are related, if not identical.
Accordingly, the similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers. 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).
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.
This refusal applies only to the goods within class 3.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. To reach the undersigned attorney by telephone after October 21, 2004, please call (571) 272 - 9477. Thank you.
Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Marc Leipzig/
Trademark Examining Attorney
Law Office 115
(703) 308-9115 x428 (phone)
(703) 746-3036 (fax)
marc.leipzig@uspto.gov
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.