| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76598901 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Registration has been refused under Section 2(d) on the basis of Certificate of Registration No. 3,014,432. The registration covers the trademark and service mark EARTHWISE, for use on personal care items, such as soaps, hair lotions, shampoos, etc., and fragrant emitting wicks for room fragrance, and for use in connection with retail store, mail order, catalog and on-line shopping services featuring home products and products for the body, face and hair. Applicant is seeking registration of the mark EARTHWISE CERTIFIED for institutional, industrial and food service cleaning preparations. Since an issue arose as to whether domestic cleaning preparations are home products, Applicant is no longer seeking registration of its mark for domestic cleaning preparations. It is submitted that no likelihood of confusion will result between the respective marks, when used on the respective goods and services. THE MARKS ARE DISTINCTIVELY DIFFERENT AND ARE NOT LIKELY TO BE CONFUSED Although the marks in issue are similar, they are distinctively different. The word CERTIFIED in Applicant's mark readily distinguishes Applicant's mark from the registered mark. Without belaboring the obvious, the marks in question are distinctively different and readily distinguishable. When comparing marks, they must be compared in their entireties. "Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight." In re Hearst Corp., 25 USPQ2d 1238, 1239 (Fed. Cir. 1992). In Hearst, the Federal Circuit found that there was no likelihood of confusion resulting from the contemporaneous use of VARGAS and VARGA GIRL on identical, inexpensive consumer goods, despite the fact that the word "girl" was merely descriptive of the goods. Id. The Federal Circuit, in Hearst, concluded that VARGA GIRL and VARGAS are sufficiently different in sound, appearance, connotation, and commercial impression to negate likelihood of confusion in terms of Section 2(d). Id. Following the Federal Circuit’s reasoning, the marks in issue, in their entireties, are sufficiently different in sound, appearance, connotation and commercial impression to negate a likelihood of confusion. It is submitted that there would be no likelihood of confusion between the mark EARTHWISE, on the one hand, and the mark EARTHWISE CERTIFIED, on the other hand. It is acknowledged that the word CERTIFIED in Applicant’s mark is descriptive, and has been disclaimed. The Federal Circuit has cautioned that portions of marks, "even if descriptive, cannot be ignored." In re Bed & Breakfast Registry, 229 USPQ 818, 819 (Fed. Cir. 1986). In summary, when considering the marks in issue in their entireties, they are readily distinguishable, and are not likely to be confused. THE GOODS IN ISSUE ARE DIFFERENT In the Office Action, it was recognized that the goods in issue are different. This is an obvious conclusion. It was stated in the Office Action that it is common for the same mark to be used on the types of goods covered by the cited registration and the types of goods on which Applicant uses its mark. The operative term is "same mark." While the same mark may be used on the same types of goods in issue, in the present case, different marks are involved. It was also stated in the Office Action that registrant’s services feature "home products," which may include the goods of Applicant. Although there may be a question of whether domestic cleaning preparations fall within the category of home products, in order to avoid the issue, domestic cleaning preparations have been removed from the identification of the goods sought to be covered by Applicant's mark. Accordingly, the goods are now identified as institutional, industrial and food service cleaning preparations. CONCLUSION The marks in issue are distinctively different and the goods and services in issue are distinctively different. It is submitted that no likelihood of confusion will result. Accordingly, it is respectfully submitted that this application is now in condition for publication, which favorable action is respectfully solicited. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| INSTITUTIONAL, INDUSTRIAL, FOOD SERVICE AND DOMESTIC CLEANING PREPARATIONS | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/14/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/14/2004 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| INSTITUTIONAL, INDUSTRIAL AND FOOD SERVICE CLEANING PREPARATIONS | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/14/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/14/2004 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Stanley H. Cohen/ |
| SIGNATORY NAME | Stanley H. Cohen |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 05/24/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed May 24 17:31:40 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.X.XX.XX-2006 0524173140321121-76598901 -332847ac7e7add5535111a68 1a52b678833-N/A-N/A-20060 524163913633713 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Registration has been refused under Section 2(d) on the basis of Certificate of Registration No. 3,014,432. The registration covers the trademark and service mark EARTHWISE, for use on personal care items, such as soaps, hair lotions, shampoos, etc., and fragrant emitting wicks for room fragrance, and for use in connection with retail store, mail order, catalog and on-line shopping services featuring home products and products for the body, face and hair.
Applicant is seeking registration of the mark EARTHWISE CERTIFIED for institutional, industrial and food service cleaning preparations. Since an issue arose as to whether domestic cleaning preparations are home products, Applicant is no longer seeking registration of its mark for domestic cleaning preparations.
It is submitted that no likelihood of confusion will result between the respective marks, when used on the respective goods and services.
THE MARKS ARE DISTINCTIVELY DIFFERENT AND ARE NOT LIKELY TO BE CONFUSED
Although the marks in issue are similar, they are distinctively different. The word CERTIFIED in Applicant's mark readily distinguishes Applicant's mark from the registered mark.
Without belaboring the obvious, the marks in question are distinctively different and readily distinguishable.
When comparing marks, they must be compared in their entireties. "Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight." In re Hearst Corp., 25 USPQ2d 1238, 1239 (Fed. Cir. 1992). In Hearst, the Federal Circuit found that there was no likelihood of confusion resulting from the contemporaneous use of VARGAS and VARGA GIRL on identical, inexpensive consumer goods, despite the fact that the word "girl" was merely descriptive of the goods. Id.
The Federal Circuit, in Hearst, concluded that VARGA GIRL and VARGAS are sufficiently different in sound, appearance, connotation, and commercial impression to negate likelihood of confusion in terms of Section 2(d). Id.
Following the Federal Circuit’s reasoning, the marks in issue, in their entireties, are sufficiently different in sound, appearance, connotation and commercial impression to negate a likelihood of confusion. It is submitted that there would be no likelihood of confusion between the mark EARTHWISE, on the one hand, and the mark EARTHWISE CERTIFIED, on the other hand.
It is acknowledged that the word CERTIFIED in Applicant’s mark is descriptive, and has been disclaimed. The Federal Circuit has cautioned that portions of marks, "even if descriptive, cannot be ignored." In re Bed & Breakfast Registry, 229 USPQ 818, 819 (Fed. Cir. 1986).
In summary, when considering the marks in issue in their entireties, they are readily distinguishable, and are not likely to be confused.
THE GOODS IN ISSUE ARE DIFFERENT
In the Office Action, it was recognized that the goods in issue are different. This is an obvious conclusion.
It was stated in the Office Action that it is common for the same mark to be used on the types of goods covered by the cited registration and the types of goods on which Applicant uses its mark. The operative term is "same mark." While the same mark may be used on the same types of goods in issue, in the present case, different marks are involved.
It was also stated in the Office Action that registrant’s services feature "home products," which may include the goods of Applicant. Although there may be a question of whether domestic cleaning preparations fall within the category of home products, in order to avoid the issue, domestic cleaning preparations have been removed from the identification of the goods sought to be covered by Applicant's mark. Accordingly, the goods are now identified as institutional, industrial and food service cleaning preparations.
CONCLUSION
The marks in issue are distinctively different and the goods and services in issue are distinctively different. It is submitted that no likelihood of confusion will result. Accordingly, it is respectfully submitted that this application is now in condition for publication, which favorable action is respectfully solicited.