UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/213456

 

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

 

likelihood of confusion

 

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. 0798172, 0745955, and 0436059 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.  The registered marks are owned by the same party.

 

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. 

 

The applicant’s mark GLANCE for, inter alia, “body sprays” has a similar appearance and commercial impression as the registered marks GLANCE, Registration No. 0798172, 0745955, and 0436059 for “hair spray and wave set,” “hair rinse,” and “shampoo,” respectively.  The dominant elements of the applicant’s mark and the registered mark are identical, thus creating a similar overall commercial impression. 

 

Moreover, the goods provided by the applicant are related to the goods provided by the registrant.  Both parties offer personal care products.  Consequently, consumers would likely believe that the applicant’s goods and the registrant’s goods emanate from  the same source.  Therefore, the applicant’s mark is not entitled to registration.

 

If the applicant clarifies the wording body spray as indicated below, indicating that it is a Class 11 good, the examining attorney will WITHDRAW this refusal.

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

Identification and Classification

 

The applicant has classified “towel bars, . . ., tissue holders, tumbler holders, lotion dispensers, soap dishes, all made of metal” in International Class 6.  The correct classification is likely International Class 21.  If the goods are precious metals, then the proper class is 14.  The applicant must either delete this wording or add International Class 21 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The wording “bath” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “bath tub,” if accurate.  TMEP §1402.01.

 

The wording “shower fittings” in the identification of goods is too broad because it could include items classified in other classes.  The applicant must amend the identification to list each item by its common commercial name.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

The wording “tub fillers” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The wording “body sprays” in the identification of goods is unacceptable as indefinite.  The nature of the goods is unclear.  The applicant may amend this wording to “shower head sprayers,” if accurate.  TMEP §1402.01.  If the goods are personal care products, the applicant may amend this wording to “body sprays in Class 3,” if accurate. 

 

The wording “hand showers” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “hand-held showers,” if accurate.  TMEP §1402.01.

 

The wording “valves, namely, mixing, wall and diverter valves” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “plumbing fittings, namely, valves, namely, mixing, wall and diverter valves,” if accurate.  TMEP §1402.01.

 

The applicant may adopt the following identification, if accurate:

 

Metal robe hooks in Class 6.

 

Bath tub, bidet and shower fittings, namely, shower control valves, couplers and drains; faucets; tub control valve; shower head sprayers; hand-held showers; plumbing fittings, namely, valves, namely mixing, wall and diverter valves in Class 11.

 

Towel bars, tissue holders, tumbler holders, lotion dispensers, soap dishes, all made of metal in Class 21.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Additional Fees

 

The application identifies goods that may be classified in four international classes.  The applicant has submitted fees for two classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

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

 

(1)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

APPLICANT’S RESPONSE

 

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 informalities.

 

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

 

 

Karla Perkins

/Karla Perkins/

Trademark Examining Attorney

Law Office 102

703-308-9102 ext. 169

ecom102@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.