UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Refusal:  Likelihood of Confusion Refusal Under Section 2(d)

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 1924983 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et. seq.   See the enclosed registration.

 

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 (C.C.P.A. 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).  TMEP §§1207.01 et. seq.

 

Applicant seeks to register the mark 6 (stylized) for “Skin cleansers, facial cleansers, body cleanser, creams, lotions and oils, moisturizing lotions, hair shampoo, conditioners, body shampoo, hair rinses, hair spray, hair tonics, suntan lotion and oils, sun block and sunscreen, colognes, perfumes, toilet water sprays, face and body paint”; the already-registered marks are NUMBER SIX (typed) for “talc, personal deodorant, after shave, cologne water, cologne spray, shave balm, bath soap.”

 

Marks may be confusingly similar in appearance notwithstanding the addition, deletion, or substitution of letters or words.  Weiss Assoc. Inc. v. HRL Assoc., 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992) (ORAL-ANGLE held likely to be confused with ORAL-B); Jockey Int'l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (ELAAN stylized held likely to be confused with ELANCE); Crocker National Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986) (COMMCASH likely to be confused with COMMUNICASH); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON  likely to be confused with MILLTRONICS (stylized)).  TMEP section 1207.01(b)(iii).

 

When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).  Moreover, regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

Further, the examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP section 1207.01(b)(viii).  The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks in this case.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).

 

And finally, a mark in typed or standard character form means that the mark may be displayed in any lettering style.  37 C.F.R. §2.52(a).  The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant or applicant is free to adopt any style of lettering, including lettering identical to that used by the other.  Therefore, where one mark at issue is in special form and the other in standard character form or typed, a likelihood of confusion will not be avoided because the standard character or typed mark could be used in the same manner of display as the stylized mark.  See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

Here, the literal portion of applicant’s mark is “6” or “six” and identical in sound, connotation and overall commercial impression to a portion of registrant’s mark.  That is, applicant’s mark is NUMBER SIX – and basically identifies the literal portion of applicant’s mark.  Moreover, registrant’s mark is in typed form and may be used in any fashion – including one which is identical to that of applicant.  Accordingly, the marks are confusingly similar in appearance, sound, connotation and overall commercial impression.

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

In this instance, the goods of applicant and those of registrant are highly related – if not identical.  That is, both sets of goods are comprised of goods used for personal care and thus are likely to be marketed through the same channels of trade and encountered by the same class of purchasers who will be likely to mistakenly believe they come from the same source.

 

Accordingly, applicant’s mark is refused registration under §2(d) of the Trademark Act.

 

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

 

Potential Refusal:  Prior Pending Application

 

Additionally, applicant should note that the examining attorney encloses information regarding pending Application Serial No. 77078353.  The filing dates of the referenced application precedes applicant's filing date.  There may be a likelihood of confusion between applicant's mark and the referenced mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

Requirement:  Identification and Classification of Goods

 

The identification of goods is unacceptable as indefinite.  Additionally, applicant may have misclassified some of the goods.  Accordingly, applicant must amend the wording of the identification and the classification of goods as indicated.  TMEP sections 1402.01, 1401.02(a) and 1401.03(b).

 

Creams, lotions, and oils – Applicant must indicate the use or type of creams, lotions, and oils, noting that, as written, such goods could potentially fall into several classes.

 

Conditioners – Again, applicant must indicate the type or use of the goods.

 

For example, the wording and classification may be amended in its entirety as follows:

 

            CLASS 3:

-         Skin cleansers, facial cleansers, body cleanser, body creams, body lotions and bath oils, moisturizing lotions, hair shampoo, hair conditioners, body shampoo, hair rinses, hair spray, hair tonics, suntan lotion and oils, sun block and sunscreen, colognes, perfumes, toilet water sprays, face and body paint.

 

In the identification, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 1402.06.  Therefore, applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Applicant must adopt the appropriate international classification number for the goods and services identified in the application.  The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services.  37 C.F.R. §6.1; TMEP §§1401 et seq.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Requirement:  Requirements for a Multiple-Class Application

 

If applicant prosecutes this application as a combined, or multiple‑class, application, applicant must comply with each of the following.

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Response Guidelines

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

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

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.