Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

This Office action is in response to applicant’s communication filed on June 23, 2010.

 

The amended identification of goods and translation statement are acceptable and have been entered into the record.

 

In the prior Office action, the applicant was notified of a potential conflict with the marks in Application Serial Nos. 79036369 and 79064040.  The referenced prior-pending applications have since registered.  Therefore, registration is refused as follows.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3757666 and 3825212.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

A likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  Next, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

Similarity of the Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

The applicant’s proposed mark CAPILLUS is similar to the registered marks CAPILYS and DESIGN (Reg. No. 3825212) and CAPILYS COSMETIQUES and DESIGN (Reg. No. 3757666) because the dominant feature in each mark, CAPILLUS/CAPILYS, sounds the same.  There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  In re Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985); TMEP §1207.01(b)(iv); see In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).  The wording CAPILLUS and CAPILYS could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  See RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); TMEP §1207.01(b)(iv).

 

The additional wording and design elements in the registered marks do not change the finding of similarity.  First, the word COSMETIQUES in Reg. No. 3757666 is descriptive and has been disclaimed.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Disclaimed matter is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).

 

Similarly, the design elements in both registered marks are not such that they change the overall commercial impressions of the marks.  The design in Reg. No. 3825212 is a tree placed in the middle of the word CAPILYS.  The design element in Reg. No. 3757666 is merely a background carrier for the mark.  In both cases, the dominant feature of the mark is still the term CAPILYS.  Further, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). 

 

In addition, where the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).  That is the case here, as the goods of the parties are the same and very closely related.

Relatedness of the Goods/Services

The applicant seeks to register its mark for use on “shampoo, hair conditioners, hair and body oils and lotions, facial and hair masks, skin and hair toners “ and “vitamin and nutritional supplements, namely, dietary supplements containing vitamins, minerals and herbs for hair and nail nutrition”.  The marks in both registrations are used on a large number of cosmetic and beauty products, including “face, body and hand creams, shampoos, hair care and hair styling gels, mousses, balms, age retardant gel, age retardant lotion, age spot reducing cream, anti-aging cream, beauty creams, beauty creams for body care, beauty gel, beauty lotions, beauty masks”.  The mark in Reg. No. 3825212 is also used on a wide variety of medical and pharmaceutical goods, including “dietary and nutritional supplements, multivitamin preparations, vitamin b preparations, vitamin c preparations, vitamin d preparations, and vitamin preparations”.

First, the applicant’s Class 3 goods include goods listed in the registrations, shampoos.  In addition, the other of applicant’s goods are essentially the same as goods listed in the registrations.  The applicant’s goods include body oils and lotions and facial masks, while the registrant’s goods include such items as anti-aging cream, beauty creams, beauty lotions, and beauty masks, which are themselves body lotions and facial masks. 

The applicant’s Class 5 goods are the same as goods listed in Reg. No. 3757666, as both the application and registration include dietary supplements and vitamin preparations.

The applicant’s mark is similar to the registered marks, as the dominant features in the marks are the words CAPILLUS and CAPILYS, which sound the same.  The goods of the parties are the same and closely related.  Accordingly, there would be a likelihood of confusion as to the source of the goods.  Registration of the applicant’s mark is therefore refused under Trademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration Nos. 3757666 and 3825212.

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.

 

 

 

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430 (phone)

(571) 273-9430 (fax)

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.