Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/665649

 

THIS IS A FINAL ACTION

 

This letter responds to the applicant’s communication filed on April 18, 2007.  The applicant  argued against the refusal under Trademark Act Section 2(d) for likelihood of confusion with Registration No(s). 3002103.  The trademark examining attorney has considered applicant’s arguments carefully and found them unpersuasive for the reason(s) below.  The refusal under Section 2(d) is maintained and made FINAL.

 

Refusal Maintained

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration No(s). 3002103 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant seeks to register the mark ROLY with a design for skin care products, namely, lotions, skin creams, facial skin cleansers, eye gels, moisturizers, toilet soap, bath soap, non-medicated towelettes impregnated with skin cleanser.  Registrant’s mark is ROLLY BRUSH for dentifrices and toothbrushes.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

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).

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrants 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).

Similarity Of The Marks

 

The registrant’s mark is ROLLY BRUSH. The applicant’s mark is ROLY with a design.  The applicant has appropriated the registrant’s mark, substituting a design for the descriptive term BRUSH to create it’s own mark.   Applicant has argued that the marks are different because ROLY is a name for pudding, while ROLLY has no meaning in the English language.  ROLY is not a term with a known meaning in English.  ROLY must be used with “poly” to refer to pudding. ROLY is the name of a dog in the British television series East Enders.  See attached evidence obtained via the Internet from the Onelook.com search engine, establishing the common meaning of ROLY-poly.  Both ROLY and ROLLY are devoid of specific meaning in the United States.  As discussed in the original Office action, the dominant portions of the marks are ROLLY and ROLY, respectively.  The terms are phonetic equivalents with no meaning.

 

 

Comparison Of Goods and/or Services

 

In the present case, the goods are closely related.  The registrant’s goods are dentifrices and toothbrushes.  The applicant’s goods are skin care products, namely, lotions, skin creams, facial skin cleansers, eye gels, moisturizers, toilet soap, bath soap, non-medicated towelettes impregnated with skin cleanser.    Applicant argues that the goods are for different purposes.  The goods are both for hygiene purposes.  The attached representative sample of third party registrations establishes the fact that the goods and/or services are produced by the same companies and sold under the same marks.  The registrations have some probative value to the extent that they suggest that the listed goods are of a type which may emanate from a single source.  In re Mucky Duck Co., 6 USPQ2d 1467 (TTAB 1988).  The goods appeal to the same consumers.  The goods are sold in the same sections of grocery and drug stores.

 

For the foregoing reasons, the refusal to register the mark under Section 2(d) of the Trademark Act is continued and made FINAL.

Response Guidelines

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a). 

 

 

 

USPTO

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: 571-272-9397

Fax: 571-273

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.