| To: | Galderma, S.A. (mlombard@gml-law.com) |
| Subject: | TRADEMARK APPLICATION NO. 77378145 - CETAPHIL - 102.0590 |
| Sent: | 3/18/2008 1:06:03 PM |
| Sent As: | ECOM102@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/378145
MARK: CETAPHIL
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Galderma, S.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 3/18/2008
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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 marks in U.S. Registration Nos. 0754929, 2529586, and 3390515 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
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.
Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).
Applicant's mark is “CETAPHIL” and design. The registered marks are “CETAPHIL,”0754929, “CETAPHIL,” 2529586, and “CETAPHIL SKIN CARE CLUB,” 3390515, respectively. Applicant’s mark is similar in appearance and sound to the registered marks in that they share the distinctive term CETAPHIL.
The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). In this case, the mere deletion of SKIN CARE CLUB from the applicant’s mark does not obviate a determination of a likelihood of confusion with registrant’s mark.
Furthermore, 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 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 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). Therefore, the simple geometric design in applicant’s mark does obviate the similarity with the registered marks caused by use of the distinctive term CETAPHIL.
The goods/services 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/services 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). TMEP §1207.01(a)(i).
Applicant’s goods are identified as “Cosmetics and skin care preparations, namely, face, hand and body soaps, cleansers and moisturizers; hair shampoos and conditioners; sunblocks and sunscreens.”
The goods for registration no. 0754929 are identified as “Preparations for Use in the Treatment of Dermatosis and for Use as Skin and Scalp Emollients and Vehicles for Use in the Preparation of Medicaments.”
The goods for registration no. 2529586 are identified as “cosmetics and skin care preparations, namely, face, hand and body soaps, cleansers and moisturizers; hair shampoos and conditioners.”
The services for registration no. 3390515 are identified as “PROVIDING HEALTH CARE INFORMATION IN THE FIELD OF DERMATOLOGY.”
Applicant’s identification of goods includes the goods or is related to the goods or services listed in the registered marks identifications because they all involve use for the skin or are related to skin care. As a result, the goods/services are related because they overlap.
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.
Ownership of Cited Registrations
If the mark in the cited registrations has been assigned to applicant, then applicant must prove ownership of that mark. TMEP §812.01. Applicant may record the assignment with the Assignment Services Division of the Office. Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq. Applicant should then notify the trademark examining attorney when the assignment has been recorded.
In the alternative, applicant may submit evidence of the assignment of the marks to applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §3.73; TMEP §502.02(a).
Mark Differs on Drawing and Specimen
The mark on the drawing page does not agree with the mark as it appears on the specimen. In this case, the drawing displays the mark as CETAPHIL and design, while the specimen shows the mark as CETAPHIL and design, plus the slogan EVERY AGE. EVERY STAGE. EVERY DAY below CETAPHIL and carried within the design.
The mark shown on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); see C.F.R. §2.72(a)(1). However, applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered; in other words, the mark on the specimen creates a different commercial impression from the mark on the drawing. 37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq., 904.05.
Therefore, applicant must submit the following:
(1) A substitute specimen that shows the mark that appears on the drawing; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.01(b).
New Drawing Required
Applicant must submit a new drawing with “®” deleted because it is not part of the mark. TMEP §§807.02 and 807.14(a).
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.
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, 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. To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq.
/Anthony M. Rinker/
Trademark Examining Attorney
Law Office 102
571-272-5491
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 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.
