UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/585590
APPLICANT: PRODUCT QUEST MANUFACTURING INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SKIN ESSENTIALS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/585590
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
Refusal – Likelihood of Confusion
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/services, so resembles the mark in U.S. Registration No. 2484648 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the attached registration.
Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services. The overriding concern is to prevent buyer confusion as to the source of the goods/services. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
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 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq.
The applicant has applied to register the mark “SKIN ESSENTIALS”, for “FACE, BODY AND hand lotions, creams and gels; to be sold exclusively to retail chains” in international class 3. The registrant has registered the mark “ESSENTIAL SKIN”, for “skin care products, namely, microdermabrasion crystals, collagen-elastin cream, bio-hydrating cream” in international class 3.
The marks are similar in that they contain the same wording. Applicant’s mark is essentially a transposition of the registrant’s mark and creates a similar commercial impression and meaning. In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Indus. Inc., 6 USPQ2d 1882 (TTAB 1988); In re General Tire & Rubber Co., 213 USPQ 870 (TTAB 1982); TMEP §1207.01(b)(vii).
Despite the small difference, the marks still sound and look similar making confusion likely.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). TMEP §1207.01(a).
The goods/services 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/services 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). TMEP §1207.01(a)(i).
The applicant’s goods and those of the registrant are highly similar. The skin care products are sold in similar if not the same channels of trade making confusion likely.
Due to the similarity of the marks and the close relationship between the goods the examiner has determined that consumer confusion is likely. The application therefore is refused due to a likelihood of confusion under Trademark Act Section 2(d).
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.
Furthermore, the following requirements must be addressed.
Disclaimer
The applicant must disclaim the descriptive wording “SKIN” and “TM” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because the term describes the main feature of the applicant’s goods. Namely, as the applicant’s identification indicates, the goods are applied on the skin.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use SKIN and TM apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Declaration / signed – dated declaration needed
Applicant must submit a statement attesting to the facts set forth in the application, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.32(b) and 2.33. No signed verification was provided with the application.
If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that “the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.
If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or §1126, the verified statement must include an allegation that “applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
To reach the undersigned attorney by telephone after October 15, 2004, please call (571) 272 - 9273. Thank you.
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.
Thank you,
/sean w. dwyer/
Sean W. Dwyer
United States Patent Trademark Office
Trademark Examiner
Law Office 103
571-272-9273
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.