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  76/563794

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §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. 1721282 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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).

 

In the present case, the applicant’s mark is “LIPODERMA-SHIELD,” and the registrant’s mark is “LIPODERMOL.”  These marks are nearly identical in commercial impression.  

 

Furthermore, the goods of the applicant and the registrant are identical.  The applicant seeks registration in relation to “ANTI-OXIDANT and ANTI-POLLUTANT INGREDIENTS and  SKIN CARE PRODUCTS, MOISTURIZING PRODUCTS, AND SKIN PROTECTORS FOR ENVIRONMENTAL PROTECTION.”  The registration covers “BIOLOGICAL PRODUCTS FOR COSMETIC USE; NAMELY, A LIPIDIC EXTRACT OF BOVINE ORIGIN FOR LATER INTRODUCTION INTO COSMETIC SKIN-CARE PRODUCTS.”  Please note, 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).

 

It should be noted that the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  Since 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 goods 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.  In re Elbaum, 211 USPQ 639 (TTAB 1981).

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Ownership of Cited Registration

If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership.  TMEP § 812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act § 10, 15 U.S.C. § 1060; 37 C.F.R. § 2.185.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. § 2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates). 

 

Identification of Goods

(1) International Class 1

The wording “anti-oxidant and anti-pollutant ingredients” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to the following, if accurate.  TMEP §1402.01

 

anti-oxidant and anti-pollutant chemicals for use in the manufacture of [indicate general nature of items, e.g., food, pharmaceuticals, cosmetics or indicate for a wide variety of goods, if accurate] in international class 1.

 

(2) International Class 3.

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite term, such as “products,” then that word must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  Please further note the wording “skin care products, moisturizing products, and anti-aging products” could indicate goods in several international classes.

 

Accordingly, the applicant may adopt the following wording for International Class 3, if accurate.

 

Skin care products, moisturizing products, and skin protectors for environmental protection, namely, [list specific items, e.g., skin cream, sun screen] in International Class 3.

 

The applicant should note that the above suggested identification of goods is acceptable as written.  Any alteration may render it unacceptable.  Accordingly, if the applicant wishes to amend the goods differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

Please further 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(a); TMEP § 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the original identification. 

 

Combined Applications

The applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods that are classified in several international classes, however applicant paid the fee for only two classes.

 

The applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If the applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Drawing

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).

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

 

 

 

 

 

/G. Fosdick/

Geoffrey Fosdick

Trademark Attorney

Law Office 111

(540) 851-0865

 

 

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 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.