Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77378145 has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: CETAPHIL (Stylized and/or with Design)
Color is not claimed as a feature of the mark.
The mark consists of overlapping ellipses over which the literal element "Cetaphil" is superimposed.

Proposed: CETAPHIL (Stylized and/or with Design, see mark)

The applicant is not claiming color as a feature of the mark. The mark consists of overlapping ellipses over which the literal element "Cetaphil" is superimposed.

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This responds to the Office Action dated March 18, 2008.

INFORMALITIES

Drawing

Pursuant to the Examining Attorney’s request, Applicant submits with this response a substitute drawing and accompanying declaration.

ARGUMENT

Likelihood of Confusion

The Examining Attorney has refused registration of the subject mark on the grounds that a likelihood of confusion exists with prior Registration Nos. 754929, 2529586, and 3390515.  Each of these registrations is owned by Galderma Laboratories, L.P.

For the reasons which follow, Applicant respectfully requests that the Examining Attorney withdraw this refusal.

            Unity of Control

Applicant and Registrant share a unity of control which avoids any likelihood of confusion.

Applicant has submitted a declaration establishing that a unity of control exists between Applicant and Registrant.  See Exhibit A.

The Court of Appeals for the Federal Circuit has held that, where the applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the mark by the applicant is likely to confuse the public about the source of the applicant’s goods because of the resemblance of the applicant’s mark to the mark of the other company.  TMEP § 1201.07(a).  The court wrote:

The question is whether, despite the similarity of the marks and the goods on which they are used, the public is likely to be confused about the source of the hair straightening products carrying the trademark “WELLASTRATE.” In other words, is the public likely to believe that the source of the product is Wella U.S. rather than the German company or the Wella organization.

In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986).

The case was remanded to the TTAB for further consideration of the issue of likelihood of confusion.  The Board concluded:

[A] determination must be made as to whether there exists a likelihood of confusion as to source, that is, whether purchasers would believe that particular goods or services emanate from a single source, when in fact those goods or services emanate from more than a single source. Clearly, the Court views the concept of “source” as encompassing more than “legal entity.” Thus, in this case, we are required to determine whether Wella A.G. and Wella U.S. are the same source or different sources....

The existence of a related company relationship between Wella U.S. and Wella A.G. is not, in itself, a basis for finding that any “WELLA” product emanating from either of the two companies emanates from the same source. Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. “Control” and “source” are inextricably linked. If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various “WELLA” trademarks, the two entities are in fact separate sources. Wella A.G. has made of record a declaration of the executive vice president of Wella U.S., which declaration states that Wella A.G. owns substantially all the outstanding stock of Wella U.S. and “thus controls the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks.” While the declaration contains no details of how this control is exercised, the declaration is sufficient, absent contradictory evidence in the record, to establish that control over the use of all the “WELLA” trademarks in the United States resides in a single source.

In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (emphasis in original), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988).

The instant situation is essentially identical to that of Wella A.G and Wella U.S. in In re Wella A.G.  The parent company is the Swiss entity, Galderma Pharma S.A.  The U.S. wholly-owned subsidiary is Galderma Laboratories, L.P.  As in In re Wella A.G., Galderma Pharma S.A. “controls the activities and operations of [Galderma Laboratories, L.P. and Galderma S.A.], including the selection, adoption and use of the trademarks.”  Inasmuch as the factual scenarios are identical, the Examining Attorney should withdraw his §2(d) refusal. 

Moreover, “[i]f the applicant or the applicant’s attorney represents that either the applicant or the registrant owns all of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source and no likelihood of confusion. This would apply to an individual who owns all the stock of a corporation, and to a corporation and a wholly owned subsidiary. In this circumstance, additional representations or declarations should generally not be required, absent contradictory evidence.”  TMEP §1201.07(b)(i).  Since Galderma Pharma S.A. does ultimately own 100% of Galderma Laboratories, L.P. and 100% of Galderma S.A., “the examining attorney should conclude that there is unity of control, a single source and no likelihood of confusion.”  Id.

For the above reasons, Applicant respectfully requests that the Examining Attorney withdraw his §2(d) refusal.

New Specimen

The Examining Attorney rejected the specimen submitted with the original application on the grounds that “[t]he 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” and “[t]he 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).”

For the reasons which follow, Applicant respectfully disagrees with the Examining Attorney’s refusal and requests that he withdraw this requirement.

While it is true that “[i]n an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen, 37 C.F.R. §§2.51(a) and 2.72(a)(1),” see TMEP § 907.12(a), the Examining Attorney has ignored the rules set forth in TMEP § 807.12(d).  Specifically, “in a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.” Emphasis added.

In this case, Applicant submits the phrase “Every Age. Every Stage. Every Day.” is an element of the label which presents “a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.”    TMEP § 807.12(a).  Moreover, CETAPHIL with the background design creates its own commercial impression apart from the slogan.

For example, in In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950), the court reversed the refusal to register the term “SERVEL” as a mutilation of the mark “SERVEL INKLINGS,” where the specimen displays an insignia between the words “SERVEL” and “INKLINGS,” and “INKLINGS” is printed in a large and different kind of type.  Similarly, in In re Royal BodyCare, Inc., ___ USPQ2d ___, Serial. No. 78976265 (TTAB Feb. 22, 2007), the Board reversed the refusal to register the term “NANOCEUTICAL,” finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name “RBC’s,” where the mark appears as RBC’S NANOCEUTICAL.

Perhaps the most relevant decision is a recent 2006 TTAB decision.  In In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006), the Board concluded that “PSYCHO” creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word “PSYCHO” is displayed in a different color, type style and size, such that it stands out.

In that case, the Applicant sought to register the word mark PSYCHO for clothing, namely, t-shirts, shirts and shorts in Class 25.  As a specimen supporting use of the mark, the applicant submitted the photograph which is attached hereto as Exhibit B.  In that case, Application Serial No. 78/249,582, the Examining Attorney refused to accept the specimen on the basis that “[t]he drawing displays the mark as PSYCHO.  However, this differs from the display of the mark on the specimen, where it appears as BUBBALOU’S DESIGN BODACIOUS BAR-B-QUE  PSYCHO and a pig.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.”

In that case, the Examining Attorney argued on appeal that “the spatial proximity in this case is very significant in the commercial connotation of the mark as shown on the specimens. It could be perceived by the consumer as unitary in scope.”

In response, Applicant argued on appeal that “[t]he mark PSYCHO is distinctively displayed with respect to the other elements on the garment. The other elements clearly form the background, and appear in a different and smaller type style than does the word PSYCHO. The bright colors, size and prominent position emphasize the Mark.”

In accepting the applicant’s arguments and reversing the Examining Attorney’s refusal, the Board wrote:

Upon careful consideration of the arguments of applicant and the examining attorney, it is our view that the word PSYCHO creates a separate and distinct commercial impression which indicates the source of applicant’s goods apart from the remaining words and design element.  Specifically, and as noted by applicant, the word PSYCHO is displayed in a different color, type style, and size such that it stands out from the remaining words and design element. The word PSYCHO has, in this display, the look of graffiti painted over a logo. It does not appear to be part of the logo. We find, therefore, that the word PSYCHO, alone functions as a mark for the identified goods. See In re 1175856 Ontario Ltd., ___ USPQ2d ___ (Serial No. 78442207) (TTAB October 26, 2006).

Inasmuch as the Board cited In re 1175856 Ontario Ltd., a discussion of that decision is in order.  In re 1175856 Ontario Ltd. stands for the proposition that the issue of mutilation boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct trademark in and of itself, and in making these determinations, the Board is mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wishes to register.

Applying the above precedent to the instant case, Applicant submits that the specimen filed along with the original application is not a mutilation of the mark as depicted in the draw and, accordingly, the Examining Attorney’s refusal should be withdrawn.

Insofar as the Board must be mindful that “that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wishes to register,” so too the Examining Attorney must be mindful that the Applicant has latitude in selecting the mark it wishes to register.

In this case, Applicant seeks protection for the design/background logo along with its well-known umbrella mark CETAPHIL.  Although the specimen includes the phrase “Every Age. Every Stage. Every Day.,” that does not alter the fact that the Applicant should be afforded leeway in selecting the mark it seeks to register.  See In re Servel, supra.

As discussed more fully below, the phrase “Every Age. Every Stage. Every Day.” is severable from the design and the mark CETAPHIL.  In this case, Applicant seeks the freedom to use the CETAPHIL & Design mark with other distinctive or non-distinctive elements.  Applicant seeks the freedom to change the severable element of the mark as the market may dictate in the future.  For example, Applicant may wish to change the phrase “Every Age. Every Stage. Every Day.” to another phrase.  Applicant may wish to substitute more descriptive material such as “Face Cleaner,” “Body Lotion” or “Moisturizer”.  TMEP § 807.12(a) and the cases cited above demonstrate Applicant’s right to make such changes provided the changed matter creates “a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.”

As mentioned above, CETAPHIL is an umbrella mark of Applicant and its related companies.  Applicant uses its CETAPHIL mark for a range of goods including skin creams and lotions, moisturizers, facial cleansers and other similar goods.  Applicant seeks registration of CETAPHIL with the background design only.  TMEP § 807.12(a) and the cases cited above establish Applicant’s right to seek registration of the mark it desires.  See In re Servel, supra.

Moreover, in this case, the drawing does not contain elements which are missing from the specimen.  To the contrary, every element shown in the drawing appears in the specimen.  To that extent, the specimen is a complete representation of the mark as depicted in the drawing.

As in the cases discussed above, the phrase “Every Age. Every Stage. Every Day.” appears below the mark CETAPHIL and in a much smaller font.  Additionally, the phrase “Every Age. Every Stage. Every Day.” is printed in italicizedfont.  By contrast, the CETAPHIL mark appears in large, normal, undecorated font.

Furthermore, in a recent Office Action addressed to the undersigned, the Examining Attorney wrote, “the remaining wording in the mark [XXXX XXXX XXXX XXXXXXXXX] is clearly a slogan and thus is not as source-indicating as the element [XXXXXXXX].”  While Applicant does not believe that that Examining Attorney’s conclusion is as broadly applicable as she implies, it is relevant to the discussion here.  Inasmuch as the U.S. Patent & Trademark Office appears to conclude that slogans are “not as source-identifying” as other elements of a mark with distinctive elements, it cannot be said that the slogan which appears on the label here is unable to separated from the mark as a whole.

As further evidence of this fact, Applicant owns Application Serial No. 78/934,421 for the mark EVERY AGE, EVERY STAGE, EVERY DAY for cosmetics and skin care preparations, namely, face, hand and body soaps, skin cleansers and skin moisturizers in Class 3.  This application was published for opposition on March 6, 2007 and a Notice of Allowance issued on May 29, 2007.  See Exhibit C.  To the extent that this tag line is capable of registration on its own (as evidenced by Exhibit C), it is clear that the phrase EVERY AGE, EVERY STAGE, EVERY DAY (or EVERY AGE. EVERY STAGE. EVERY DAY.) is capable of registration.  It is distinctive.  It is severable from the label as depicted in the specimen filed with this application. 

Therefore, even assuming that the label shows two (2) elements that, when joined, could form a composite mark, that “does not necessarily mean that those elements are inseparable for registration purposes.”  TMEP § 807.12(d).  “An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.”  Id.  Here, as discussed above, the elements of the mark are separable.

Applicant submits that the elements of the subject specimen are far more separable that those in the In re Big Pig, Inc. case.  In that case, the specimen was so “busy” with so much going on, it was much more difficult to separate the various elements of the mark.  While it is true that the mark PSYCHO appeared in a distinct font, a contrasting color and in the center of the logo, Applicant nonetheless believes that given the number of elements combined into that single specimen, it was far more difficult to separate PSYCHO as an individual mark than it is to separate CETAPHIL & Design from the phrase EVERY AGE. EVERY STAGE. EVERY DAY.  The “cleaness” and simplicity of the specimen submitted by Applicant in this case makes it easy to separate the elements of the specimen.

Likewise, in In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989), the Board reversed the Examining Attorney’s refusal to accept a specimen showing TRO6AI-TINEL-LOCK-RING for the mark TINEL-LOCK.  The Board concluded that the “fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a trademark.”  Applicant nonetheless submits that the joining of the part number and the generic identifier “RING” serves to create a more unitary presentation of the mark than does the inclusion of separate elements, presented in different size and style fonts on separate lines of the label.  If the Board concluded that the joining of these elements (in the same font and style without any design) with hyphens does not create an inseparable, unitary mark, then the appearance of both CETAPHIL and EVERY AGE. EVERY STAGE. EVERY DAY. cannot be viewed as a unitary mark.

By contrast, the Board upheld a refusal to register when the applied-for mark KRAZY appeared on the specimen on the same line and in the same script as the expression “MIXED-UP”.  The Board, in that case, concluded that KRAZY did not in itself function as a registrable trademark apart from the unitary phrase KRAZY MIXED-UP.  In re Semans, 193 USPQ 727 (TTAB 1976).  The instant case is distinguishable from In re Semans since the elements in the instant specimen appear on different lines, in different size font and with a different stylization (italicized versus non-italicized).  It is therefore clear that the instant case is more analogous to the factual situations in which the Board reversed the Examining Attorneys’ refusals to register than it is to the decisions in which the Board upheld such refusals.

As discussed above, Applicant’s CETAPHIL mark is an umbrella mark which is used on a variety of goods and services.  Since CETAPHIL is an umbrella mark, it functions in the same way that RBC’s functions in the RBC’s NANOCEUTICAL mark.  See In re Royal BodyCare, Inc.  Inasmuch as the Board concluded that RBC’s and NANOCEUTICAL created distinct commercial impression from RBC’s, EVERY AGE. EVERY STAGE. EVERY DAY. creates a distinct commercial impression from CETAPHIL.

While it may be true that EVERY AGE. EVERY STAGE. EVERY DAY. appears in relatively close proximity to CETAPHIL, the proximity of a mark’s elements is not the only factor to consider.  The Examining Attorney must also consider the size of the respective elements, the stylization of the font, the fact that the elements appear on different lines, and the fact that Applicant’s CETAPHIL has been on the market since 1950 (for nearly sixty (60) years) and consumers have come to recognize the CETAPHIL mark and brand apart from any other elements which may appear on the various product labels.

In view of the arguments presented above, it is clear that the Examining Attorney’s refusal under §2.51(a) must be withdrawn.

CONCLUSION

In view of the above arguments, Applicant has responded to each issue raised by the Examining Attorney.  Accordingly, Applicant respectfully requests that the Examining Attorney approve the subject application for publication as soon as practicable.  If a telephone conference will expedite the prosecution of this application, the Examining Attorney is invited to contact the undersigned at the phone number of record.

Respectfully submitted,

EVIDENCE
Evidence in the nature of Exhibit A: Declaration Exhibit B: Specimen from Application Serial No. 78/249,582 Exhibit C: TESS/TARR Record for Application Serial No. 78/934,421 has been attached.
Original PDF file:
evi_6511392162-091505698_._Exhibit_A.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_6511392162-091505698_._Exhibit_B.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6511392162-091505698_._Exhibit_C.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Maud ROBERT/      Date: 07/21/2008
Signatory's Name: Maud ROBERT
Signatory's Position: Trademark Counsel

Response Signature
Signature: /g mathew lombard/     Date: 07/21/2008
Signatory's Name: G. Mathew Lombard
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77378145
Internet Transmission Date: Mon Jul 21 11:34:09 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2008072111340939
4318-77378145-420bd64b79fb2f3aad798a4c46
4242dc56c-N/A-N/A-20080721091505698582