TEAS Petition to Revive Abandon Applic

---- Forwarded by Amanda Samuel/USANY/NA/COLPAL on 06/14/2005 02:54 PM -----

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Law Office 114

Attention: Examining Attorey Mary Boagni

FROM:

Amanda Samuel

Colgate-Palmolive Company

300 Park Avenue

New York, NY 10022

(212) 310-2121

RE: RESPONSE TO OFFICE ACTION

SERIAL NO: 78/409660

TRADEMARK : 360º

FILING DATE: April 28, 2004

APPLICANT:                          Colgate-Palmolive Company

Dear Ms. Boagni,

This letter is in response to Office Action No. 1 dated December 7, 2004 ("Office Action") related to U.S. Trademark Application No. 78/409660 ("Application"). Applicant respectfully submits the following response to each objection raised in the Office Action.

Section 2(d) - Likelihood of Confusion Refusal

The Examiner has raised an objection to the Application based on the likelihood of confusion between Colgate?s proposed mark, "360°," to be used for a "Colgate 360°" toothpaste, and the registered "360° Perry Ellis" mark used for cologne and perfume, U.S. Registration Nos. 2729330 and 232468. Applicant believes that there is no likelihood of confusion due to the dissimilar nature of goods, dissimilar channels of commerce, different conditions under which, and buyers to whom, sales are made, and the fame of Colgate and Perry Ellis housemarks as the marks associated with different types of products.

FACTS:

Applicant, filed Application Serial Number 78/409660 with the U.S. Patent and Trademark Office to obtain registration of the mark "360°" on April 28, 2004. Applicant was refused on grounds of likelihood of consumer confusion with two existing marks owned by Perry Ellis International. 15 U.S.C. §1052(d). The mark "360° PERRY ELLIS" was registered to PEI Licensing, Inc. on February 29, 2000 (Registration No. 2729330). The mark "360°" was registered to Perry Ellis International, Inc. on June 24, 2003 (Registration No. 2324681). Both marks are in International Class 3, for goods and services in fragrances and personal care products. In its conclusion that consumer confusion is likely, the USPTO cites two DuPont factors: 1. the similarity of marks as to appearance, sound, meaning and commercial impression, and, 2. the relatedness of the goods and/or services. Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357 (Cust. & Pat.App. 1973).

Perry Ellis International is a leading licensor, designer and marketer of high-quality menswear. The "360°" and "360° PERRY ELLIS" marks are used for a line of men?s and women?s fragrances. The products are found in department and specialty stores. The Perry Ellis brand name is associated with expensive, high-quality goods.

Applicant is an international leader in Oral Care, Personal Care, Home Care and Pet Nutrition. Colgate products can be found in mass market retailers, drugstores, warehouse stores and small retailers. Colgate products are sold in over 200 countries and territories around the world under such internationally recognized brand names as Colgate®, Palmolive®, Mennen®, Softsoap®, Irish Spring®, Protex®, Sorriso®, Kolynos®, Ajax®, Axion®, Soupline®, Suavitel® and Fab®, as well as Hill's Science Diet® and Hill's Prescription Diet® pet food. Colgate application, Serial No. 78/409660, for "360°" in connection with toothbrushes has been Allowed and its Statement of Use has been accepted. Colgate seeks to register "360°" for use as counterpart toothpaste, substantially similar to the 360° toothbrush.

DISCUSSION:

The standard for determining whether a likelihood of consumer confusion exists under the Lanham Trademark Act, §§ 2, 2(d), 15 U.S.C.A. §§1052, 1052(d), consists of evaluating thirteen possible factors. DuPont, 476 F.2d 1357 (Cust. & Pat.App. 1973). The USPTO rejected the Application based on its finding of similar commercial impression and similarity of the goods, the first two DuPont factors. The factors listed in the DuPont decision "are not listed?in order of merit. Each may from case to case play a dominant role." Id. at 1361-1362. Applicant contests this refusal by arguing the following DuPont factors to show the marks do not create a similar commercial impression: 1) different channels of trade; 2) the dissimilar nature of the goods; 3) different conditions under which, and buyers to whom, sales are made, and; 4) the fame of Colgate and Perry Ellis housemarks.

Similarity of Marks

The USPTO refusal states that the similarity of the marks as to sound and meaning lowers the threshold necessary to find a likelihood of confusion with respect to the relationship between goods and services. Both marks use "360°," which is identical in sound and meaning. However, "even close similarity between two marks is not dispositive of the issue of likelihood of confusion. Similarity in and of itself is not the acid test. Whether the similarity is likely to provoke confusion is the crucial question." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1133 (2d Cir. 1979), citing Callman s 82.1(a), at 601-02 (footnote omitted). The facts here indicate other factors weigh heavily in favor of no likelihood of confusion. The test is the Dupont multi-factor balancing test, which is based on the "general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchaser usually give in buying that class of goods." Generalizations as to the outcomes of this test are difficult, since "every product has its own separate threshold for confusion of origin." Taylor Wine Co. v Bully Hill Vineyards, Inc. 569 F.2d 731, 733 (2d Cir. 1978).

Channel of Trade

Since marks are to be evaluated as they would be encountered in the marketplace, "similarity or dissimilarity or established, likely-to-continue trade channels" are a factor. DuPont, 476 F.2d at 1361. The USPTO refusal states that the parties? products will be encountered by consumers in the same channels of trade. Some products that have been held to travel in the same channels of trade are breads and cheeses (Martin?s Famous Pastry, 748 F. 2d 1565, 1567 (Fed. Cir. 1984), and cigars and whiskey (John Walker & Sons v. Tampa Cigar Co., 124 F.Supp 254 (D.C. Fla. 1954). In Martin?s Famous Pastry, the court held that although bread and cheese products could be found in different areas of a market, the Board was not in error to take notice of the fact that "?a wide variety of baked goods are now stored and sold in supermarkets in frozen or refrigerated form? or that ?deli counters may well display bread and rolls in close proximity to the cold cuts and cheese purveyed there.?" In contrast, lip balm and anti-perspirant have been held to travel in separate trade channels, because although both are commonly found in the same stores, consumers encounter them in different areas of the store. W.W.W. Pharmaceutical Co. v Gillette Co., 984 F.2d 567 (2d Cir. 1993). Therefore, products are held to exist in the same trade channel if they are to be found in close proximity to each other, generally in the same store.

The two products at issue here, Colgate toothpaste and Perry Ellis personal fragrances, are sold at different stores. Colgate toothbrushes and toothpaste are commonly sold in drugstores and supermarkets. Perry Ellis personal fragrances are sold in department stores and specialty perfume stores. Therefore, the products fail to satisfy the established standard for similar trade channels.

Dissimilarity of Goods

Furthermore, toothpaste and cologne are entirely different types of products. Under the "similarity of goods" factor in the likelihood of confusion test, the question is whether the products are the kind that the public associates with a single source, not whether consumers are able to readily distinguish between the products of the parties. E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d 1525, 1530 (11th Cir.1985). In determining similarity, courts look to product function and design. Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999). Toothpaste and cologne are not so similar that consumers would automatically assume the same manufacturer produces both.

Courts also consider direct competitiveness as a measure of similarity. Goods that do not directly compete are likely not similar. In considering industrial and common-use staplers, a court held that, "The Arrow and Stanley products at issue here are both staplers and are sold in some of the same stores. Despite these similarities, the district court correctly recognized that the products are functionally different and hence, are not directly competitive." Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384 (2d Cir. 1995). The products considered in Arrow were both the same type of good, namely staplers. Here, the products are not likely to be viewed as similar in the mind of the consumer. Toothpaste and cologne are two distinct types of products, and not directly competitive because they are functionally different. Therefore, the dissimilarity of toothpaste and cologne make it further unlikely consumers will be confused as to the origin of the products.

Buyer Sophistication

A critical DuPont factor in this case is "the conditions under which and buyers to whom sales are made, i.e. ?impulse vs. careful, sophisticated purchasing.?" DuPont, 476 F.2d at 1361. It is generally accepted that the more expensive a product is, the more carefully a consumer will examine it in purchasing it. McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979), citing Restatement 3rd, §20 comment h. Inexpensive products, such as those sold in supermarkets, drugstores and discount retailers, are generally purchased casually as "impulse buys." Beer Nuts v. Clover Foods, 805 F.2d 920 (10th Cir. 1986), (products sold in supermarkets unlikely to be carefully examined); Martin?s Famous Pastry, 748 F.2d at 1567, ("Bread and cheese are staple, relatively inexpensive comestibles, subject to frequent replacement. Purchasers of such products have long been held to a lesser standard of purchasing care"). Applicant is using the mark "360°" on its toothbrush and intends to use the mark "360°" on its toothpaste, which can be classified as "impulse buys," everyday items purchased by the average consumer with minimal attention due to their low prices. See, RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979), ("products' [fruit punch juice] modest cost was not conducive to the exercise of careful selectivity by purchasers"); SunFun v. Suntan R&D, 656 F.2d 186 (5th Cir. 1981), (for suntan lotion); W.W.W. Pharmaceutical Company, Inc. v. Gillette Co., 984 F.2d 567 (for lip balm); Specialty Brands v. Coffee Bean, 748 F.2d 669 (for coffee).

On the other hand, expensive items are bought in a different mindset. Trademark law recognizes this by using a different standard when expensive goods are at issue. Instead of the "reasonable" purchaser standard, purchasers of expensive goods are measured against an elevated "discriminating" purchaser standard. Mueller Furnace v. United Conditioning, 222 F. 2d 755 (Cust. & Pat.App. 1955); Weiss v. HRL, 902 F.2d 1546 (Fed.Cir. 1990). Shopping for oral care products and shopping for a personal fragrance are different experiences in the marketplace. Expensive goods are purchased less frequently than inexpensive goods. One may casually purchase toothpaste, but one selects or chooses a personal fragrance. Consumers generally take more care and attention in selecting a cologne or perfume for themselves than they do for everyday items such as toothpaste.

Marks used with Housemarks

Marks are to be evaluated in their entirety, including any housemarks. Both products here use their housemarks next to "360°." "[W]hen a similar mark is used in conjunction with a company name, the likelihood of confusion may be lessened." W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 573 (2d Cir.1993) (internal citations omitted), limited on other grounds by Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 46 (2d Cir.1994). The "360°" mark on Colgate packaging would appear next to the housemark, "Colgate," prominently displayed in big letters in a clear bold font. Addition of a housemark is not dispositive. However, the underlying goal is always whether the consumer is likely to be confused. Therefore, the presence of housemarks is significant because Colgate and Perry Ellis are world-famous names. They are well-recognized by consumers to be the source of different products?Colgate for oral care products, especially toothpaste (the proposed use of the mark), and Perry Ellis for apparel and personal fragrances. Consumers are unlikely to confuse the two products even though "360°" appears in both names.

The USPTO refusal statement states that "[t]he deletion of the housemark PERRY ELLIS from the registrant?s mark does not overcome the refusal under Trademark Act Section 2(d)." The cases cited by the Office in support of this statement are not on point with the facts of the instant case. In Hat Corp. of America v John B. Stetson Co., 223 F.2d 485, two well-known hat makers produced hats with the similar names, "Rail Bird" and "Game Bird." However, since the marks in dispute did not include housemarks, the significance of housemarks and their capacity to distinguish was never reached by the court. The refusal also cites Rockwood Chocolate Co., Inc v Hoffman Candy Co., 372 F.2d 552 (Cust. & Pat.App. 1967). In this case the court holds that the likelihood of confusion is not overcome by addition of a housemark when the marks are used for sale of identical goods. Here, the products certainly not identical, they are different types of goods, and are found in different stores. The refusal cites A.T. Cross Co. v Jonathan Bradley Pens, Inc., 470 F.2d 689 (2d Cir. 1972), in which identical products were at issue. Furthermore, in that case the defendant?s use of a similar sounding mark was motivated by a bad-faith attempt to exploit the integrity of a profitable, established housemark for pens. Bad faith is not at issue here. For the same reason, the refusal?s cite to W.E. Bassett Co. v Revlon, Inc., 435 F.2d 656 (2d Cir. 1970), is not applicable here. That case held that use of defendant?s housemark in conjunction with plaintiff?s mark was insufficient to defeat an infringement claim because the defendant had deliberately infringed plaintiff?s mark in bad faith, after defendant had attempted to buy plaintiff?s business and was refused.

CONCLUSION:

The appearance of "360°" in the names of both Colgate and Perry Ellis products does not create a similar commercial impression and is unlikely to cause consumer confusion. The conditions under which, and the buyers to whom, sales are made are different. The sophistication of purchasers of each good is different. The natures of the goods are dissimilar. Toothbrushes are low-priced "impulse buys," while personal fragrances are not. The goods are not presented to consumers in close proximity to each other; they travel in different channels of commerce. Finally, Colgate and Perry Ellis are world-famous brand names, recognized by consumers to be sources of different types of products.

For the foregoing reasons, the Applicant hereby respectfully requests that the Examiner withdraw the refusal to register the Application and permit the Application to proceed to publication. If the Examiner would like to discuss any of the issues raised this Response to Office Action, please feel free to contact me at the number below for a telephone conference.

Regards,

Amanda C. Samuel

Attorney for Applicant

****************************************

Amanda C. Samuel

Trademark and Copyright Attorney

Colgate-Palmolive Company

300 Park Avenue

New York, New York 10022

Tel. (212)310-2121

Fax. (212) 310-3406

amanda_samuel@colpal.com