UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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 76/561130

 

This letter responds to applicant’s communication filed on December 3, 2004.

 

Resolved Issues:

 

• Applicant’s disclaimer of BEBE is ACCEPTABLE.

 

• Applicant’s amendments regarding the mark’s standard character format and translation of the mark are also ACCEPTABLE. 

 

Unresolved Issue:

 

Refusal under Section 2(d) for Likelihood of Confusion

 

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(s). 2791674 and 2358368.  37 C.F.R. §2.64(a).

 

Applicant seeks to register the wording “BEBE BRILLANTE” in connection with various goods and toys in International Classes 16 and 28.  The applicant argues that the Section 2(d) refusal in connection with the cited “BRILLIANT BABY” registrations should be withdrawn because the applicant owns the exclusive, world-wide and perpetual license to use those marks in connection with Spanish-speaking markets, goods and the like. 

 

The refusal under Section 2(d) is not obviated by the licensing agreement that is discussed in the declaration of Dennis Fedoruk.  The information provided by the applicant does not show that there is unity of control over the use of the trademarks.  Please note the requirement for unity of control discussed in In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (emphasis in original), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988).

 

The existence of a related company relationship between Wella U.S. and Wella A.G. is not, in itself, a basis for finding that any “WELLA” product emanating from either of the two companies emanates from the same source.  Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks.  “Control” and “source” are inextricably linked.  If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various … trademarks, the two entities are in fact separate sources.  [emphasis added]

 

Further, please note the following from the Trademark Manual of Examining Procedure: 

 

The licensing relationship suggests ownership in one party and control by that one party over only the use of a specific mark or marks, but not over the operations or activities of the licensee generally.  Thus, there is no unity of control and no basis for concluding that the two parties form a single source.  Precisely because unity of control is absent, a licensing agreement is necessary.  The licensing agreement enables the licensor/owner to control specific activities to protect its interests as the sole source or sponsor of the goods or services provided under the mark.  Therefore, in these situations, it is most unlikely that an applicant could establish unity of control to overcome a §2(d) refusal. [emphasis added]

 

            TMEP § 1201.07(b)(iv). 

 

For these reasons, the refusal under Section 2(d) is MAINTAINED and made FINAL because the applicant has not provided any information that shows that there is unity of control over the use of the trademarks at issue. 

 

Please note that the applicant may choose to attempt to overcome the §2(d) refusal by submitting a consent agreement or other conventional evidence to establish no likelihood of confusion.  See In re Sumitomo Electric Industries, Ltd., 184 USPQ 365 (TTAB 1974). 

 

 

Options

 

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).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Attorney-Advisor

USPTO, Law Office 113

(571) 272-9240

FAX Questions (571) 273-9240

FAX Responses (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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