Offc Action Outgoing

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:

NOTE: The Office has reassigned this application to the undersigned trademark examining attorney.

Non-Final Action

This Office action is in response to applicant’s communication filed on July 21, 2011, in which the applicant amended the identification and classification of goods, and argued against the refusal under Trademark Act Section 2(d).

The amended identification and classification of goods is acceptable, and has been entered in the record.

Entity Clarification – New Issue

Applicant must specify what type of entity is applying, e.g., an individual, partnership, corporation or joint venture. See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.

Section 2(d) Refusal Continued

The January 25, 2011 Office Action refused registration under Trademark Act Section 2(d) for likelihood of confusion with U.S. Registration No. 1491805. Applicant argued against the refusal in the July 21, 2011 communication.

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). 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).

Applicant’s mark is NOEL (standard character form) for:

“Fragrance products for land vehicles, aircraft, marine craft, personal, commercial, industrial and home use, namely, air fresheners” [in International Class 005].

The registered mark is - Noël - (stylized form with design) for:

“Potpourri; sachets; pomanders; incenses; soaps; fragrant essential oils for spraying into the air within living areas and for application on furniture, woodwork and potpourri; fragrant simmering non-edible spices” [in International Class 003].

Contrary to Applicant’s arguments, the parties’ marks are virtually identical in appearance (differing only by an umlaut and two stylized hyphens.)

With respect to the applicant’s standard character mark, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display. TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a). Thus, a mark presented in stylized characters or otherwise in special form generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”); In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).

In this case, the parties’ marks are virtually identical in spelling, and could clearly be pronounced the same. (See attached entries for “noel” and “umlaut” from www.merriam-webster.com.) There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 n.3 (TTAB 1987); TMEP §1207.01(b)(iv). Such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

With respect to the parties’ goods, Applicant presents no evidence in support of its assertions that the specified fragrance products are unrelated. The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

In this case, the parties identify fragrance products that are frequently offered under the same mark, and in the same channels of trade. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein are of a kind that may emanate from a single source under a single mark. See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

As to the sophistication of prospective consumers, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

As a result of the foregoing, the refusal under Trademark Act Section 2(d) is CONTINUED.

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

(571) 272-9284

nelson.snyder@uspto.gov (Informal comms only Include Serial No.)

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

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.

Offc Action Outgoing [image/jpeg]