Offc Action Outgoing

This letter responds to the applicant’s communication filed on February 10, 2005. The present application has been revived. The applicant’s amendment of the identification of goods is acceptable.

Section 2(d) - Likelihood of Confusion Final Refusal

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1721282 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive. Registration was also refused on the grounds that the applicant failed to provide the Office with a standard character drawing statement.

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL. Furthermore, the refusal to register based upon the lack of standard character drawing statement is also maintained and made FINAL.

The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). TMEP §1207.01(b)(viii). In the present case, the significant portions of these marks are identical. The applicant’s mark is “LIPODERMA,” and the registrant’s mark is “LIPODERMOL.” The term “LIPODERM” is a common to both the applicant’s and the registrant’s mark. The additional letters added to the applicant’s mark and registrant’s mark do very little to distinguish these marks. Indeed, “LIPODERMA,” and “LIPODERMOL” are nearly identical in sound, meaning and commercial impression. Please note, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).

Furthermore, the goods of the applicant and the registrant are identical. The registration covers “biological products for cosmetic use; namely, a lipidic extract of bovine origin for later introduction into cosmetic skin-care products.” The present application seeks protection for “skin care products, moisturizing products, and anti- aging products, namely, skin cream, and hand cream all sold to cosmetics manufacturers.” Clearly the registrant’s goods are used as ingredients for cosmetic skin-care products. While broader in scope, the applicant’s identification defines goods which may also be used as ingredients for cosmetic skin-care products. Indeed, the applicant defines the goods in International Class 1 as for use in the manufacture of pharmaceuticals, and cosmetics.

Please note, the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration. If the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. TMEP §1207.01(a)(iii).

The applicant argues the following.

The cited registration is ostensibly for goods sold to consumers. Applicants goods, as now amended, are specifically directed to cosmetic manufacturers. Such products are clearly sold in different channels of trade as compared to the products in the cited registration. The respective products are also marketed under different conditions, due to the difference in the nature of the products.

However, this argument is clearly not supported by the application record. As stated above, the registration covers cosmetic ingredients for “later introduction into cosmetic skin-care products.” The applicant has introduced no evidence to support the claim that the trade and marketing channels of the applicant’s goods and registrant’s goods are different.

The applicant further argues that the applicant’s products are purchased by sophisticated purchasers. However, even if this is correct, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

Finally, 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).

Drawing Final Refusal

Finally, the refusal to register is made final on the grounds that the applicant failed to provide the Office with a standard character statement.

Applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).

Final Refusal

If the 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). The 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: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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.

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.

/G. Fosdick/

Geoffrey Fosdick

Trademark Attorney

Law Office 111

(540) 851-0865

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.