UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/003377
APPLICANT: Johnson Publishing Company, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: PERFECT FINISH
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 06-2333
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
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 77/003377
The assigned examining attorney has reviewed the referenced application and determined the following.
The substitute declaration filed on October 30, 2006 is acceptable.
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1994391. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Applicant proposes the mark PERFECT FINISH for use in connection with “foundation makeup.” Registrant provides “cosmetics, namely lip color, eyeshadow blush, foundation and powder for the face” in connection with the mark PERFECT FINISH.
In the first step of the analysis, the examining attorney finds that the marks are identical.
In the second step of the mark, the examining attorney finds that the goods are the same. If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a). Nevertheless, the identifications of goods indicate that both the applicant and the registrant provide foundation makeup for the face. Thus the goods travel in the same channels of trade.
For these reasons, it is likely that the purchasing public would confuse the goods as originating from the same source. Therefore, the examining attorney refuses registration of the applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
Applicant May Respond
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Applicant states that the applied-for mark has acquired distinctiveness under Section 2(f) of the Trademark Act. However, this statement is unnecessary because the mark appears to be inherently distinctive. 15 U.S.C. §1052(f); TMEP §1212.02(d). Applicant can withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record.
If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.
/D. Beryl Gardner/
Examining Attorney
Law Office 112
571-272-9162 (office)
571-273-9162 (fax)
beryl.gardner@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.