| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77002473 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| DATE OF NOTICE OF ABANDONMENT | 07/05/2007 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional. The signatory did not receive the Office action prior to the expiration of the six-month response period, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Introduction In the instant Office Action, the Examiner has found “no similar registered mark . . . that would bar registration under Trademark Act Section 2(d),” but a prior pending mark has been cited as potentially presenting a bar to registration. For the reasons set forth below, and in view of Applicant’s entry of the necessary disclaimer satisfying the Examiner’s informal issue, Applicant respectfully contends that the Application should not be suspended but instead should pass to immediate publication. Disclaimer of “TOOTHPASTE” Per the Examiner’s requirement, Applicant has entered a disclaimer of the term “TOOTHPASTE” apart from the mark as shown. Potential Refusal under Section 2(d) The Examiner has indicated that upon entry of the requested disclaimer “action on this case may be suspended pending final disposition” of Application Serial No. 78493254 for the mark RESTORE BY AVACOR in connection with “color enhancing treatments for hair” in Class 3. Applicant respectfully contends that there is no likelihood of confusion between the subject RESTORE TOOTHPASTE and the cited RESTORE BY AVACOR marks and that to suspend the instant Application in view of this earlier-filed application would be improper. Most significantly, the Examiner has failed to demonstrate how the respective goods are at all related beyond both being in the broad general class of health and beauty products in Class 3. Clearly, Applicant’s toothpaste and the cited applicant’s hair coloring products are virtually unrelated and would not even be sold in the same specialty stores or even on the same aisle in larger retail stores. The purchasers of the respective products would also be distinct with distinct purchasing considerations. On this basis alone, there is simply no evidence that confusion is likely. In further support of Applicant’s contention, it is noted that the Examiner has also failed to cite a single example of a common mark being used for both toothpaste and a hair coloring product. Moreover, while Applicant would concede that such examples can be found, it is clear that they are the significant minority, with the attached TESS search results indicating that only about four percent (4%) of marks applied for in Class 3 relate to both hair care and toothbrushes or toothpaste versus the total number of marks in Class 3 that relate to only one or the other. Thus, it is clear that consumers are not at all conditioned to expect to find the same brands and their sources behind both hair coloring products and toothpastes and the like. In fact, per the further TESS search results attached, when the subset of Class 3 goods are more narrowly focused on toothpaste and hair coloring or treatment, the percentage of the whole drops to about one percent (1%). Therefore, Applicant respectfully contends that the types of goods at issue here actually suggest that confusion is unlikely. Finally, turning to the marks themselves, while both do share the common term “RESTORE,” looking to the respective marks as a whole and the additional wording included in each further counsels against any likelihood of confusion. Clearly, with Applicant’s mark including the descriptive and now disclaimed term “TOOTHPASTE,” consumers are immediately left with the impression that the product is for maintaining the health and beauty of the teeth. By comparison, the cited prior-pending mark is RESTORE BY AVACOR, which is clearly distinct on its face in appearance, pronunciation, meaning, and overall commercial impression. It is further noted that the same prior applicant already has obtained Registration No. 2,870,584, attached, for the mark BOOST BY AVACOR in connection with “hair care treatment products, namely hair thickeners.” This BOOST BY AVACOR mark has been in use since August 2003 and registered since August 2004 and so has conditioned consumers to expect that products “By Avacor” are hair-care related, further mitigating against any possibility of confusion, much less a likelihood of confusion. Conclusion Based on the arguments and amendments made herein, Applicant respectfully contends that the Mark is condition for immediate publication for registration on the Principal Register. Prompt and favorable notice thereof is earnestly solicited. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0002.JP G |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0003.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0004.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0005.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0006.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0007.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0008.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0009.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0010.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0011.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0012.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0013.JP G | |
| \\TICRS2\EXPORT13\770\024 \77002473\xml2\POA0014.JP G | |
| DESCRIPTION OF EVIDENCE FILE | relevant TESS print-outs |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | "No claim is made to the exclusive right to use "TOOTHPASTE" apart from the mark as shown." |
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| 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 | /Jeromye V. Sartain/ |
| SIGNATORY'S NAME | Jeromye V. Sartain |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 07/17/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 18 01:56:30 EDT 2007 |
| TEAS STAMP | USPTO/POA-XX.XXX.XXX.XX-2 0070718015630764568-77002 473-3802be6a433a7892a423f 9cb1d9b84fa82-CC-3391-200 70718013858500799 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp. 11/30/2008) |
Introduction
In the instant Office Action, the Examiner has found “no similar registered mark . . . that would bar registration under Trademark Act Section 2(d),” but a prior pending mark has been cited as potentially presenting a bar to registration. For the reasons set forth below, and in view of Applicant’s entry of the necessary disclaimer satisfying the Examiner’s informal issue, Applicant respectfully contends that the Application should not be suspended but instead should pass to immediate publication.
Disclaimer of “TOOTHPASTE”
Per the Examiner’s requirement, Applicant has entered a disclaimer of the term “TOOTHPASTE” apart from the mark as shown.
Potential Refusal under Section 2(d)
The Examiner has indicated that upon entry of the requested disclaimer “action on this case may be suspended pending final disposition” of Application Serial No. 78493254 for the mark RESTORE BY AVACOR in connection with “color enhancing treatments for hair” in Class 3.
Applicant respectfully contends that there is no likelihood of confusion between the subject RESTORE TOOTHPASTE and the cited RESTORE BY AVACOR marks and that to suspend the instant Application in view of this earlier-filed application would be improper.
Most significantly, the Examiner has failed to demonstrate how the respective goods are at all related beyond both being in the broad general class of health and beauty products in Class 3. Clearly, Applicant’s toothpaste and the cited applicant’s hair coloring products are virtually unrelated and would not even be sold in the same specialty stores or even on the same aisle in larger retail stores. The purchasers of the respective products would also be distinct with distinct purchasing considerations. On this basis alone, there is simply no evidence that confusion is likely.
In further support of Applicant’s contention, it is noted that the Examiner has also failed to cite a single example of a common mark being used for both toothpaste and a hair coloring product. Moreover, while Applicant would concede that such examples can be found, it is clear that they are the significant minority, with the attached TESS search results indicating that only about four percent (4%) of marks applied for in Class 3 relate to both hair care and toothbrushes or toothpaste versus the total number of marks in Class 3 that relate to only one or the other. Thus, it is clear that consumers are not at all conditioned to expect to find the same brands and their sources behind both hair coloring products and toothpastes and the like. In fact, per the further TESS search results attached, when the subset of Class 3 goods are more narrowly focused on toothpaste and hair coloring or treatment, the percentage of the whole drops to about one percent (1%). Therefore, Applicant respectfully contends that the types of goods at issue here actually suggest that confusion is unlikely.
Finally, turning to the marks themselves, while both do share the common term “RESTORE,” looking to the respective marks as a whole and the additional wording included in each further counsels against any likelihood of confusion. Clearly, with Applicant’s mark including the descriptive and now disclaimed term “TOOTHPASTE,” consumers are immediately left with the impression that the product is for maintaining the health and beauty of the teeth. By comparison, the cited prior-pending mark is RESTORE BY AVACOR, which is clearly distinct on its face in appearance, pronunciation, meaning, and overall commercial impression. It is further noted that the same prior applicant already has obtained Registration No. 2,870,584, attached, for the mark BOOST BY AVACOR in connection with “hair care treatment products, namely hair thickeners.” This BOOST BY AVACOR mark has been in use since August 2003 and registered since August 2004 and so has conditioned consumers to expect that products “By Avacor” are hair-care related, further mitigating against any possibility of confusion, much less a likelihood of confusion.
Conclusion
Based on the arguments and amendments made herein, Applicant respectfully contends that the Mark is condition for immediate publication for registration on the Principal Register. Prompt and favorable notice thereof is earnestly solicited.
