To: | URBAN DECAY COSMETICS, LLC (valcarcelm@gtlaw.com) |
Subject: | TRADEMARK APPLICATION NO. 78563090 - HARD CANDY SWEET CHE - 63156.010100 |
Sent: | 5/2/2008 10:30:07 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/563090
MARK: HARD CANDY SWEET CHE
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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: URBAN DECAY COSMETICS, LLC
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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: 5/2/2008
This application has been re-assigned to the examining attorney noted below.
On March 14, 2006, action on this application was suspended pending the disposition of Application Serial No. 78512621. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
Section 2(d): Likelihood of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In this case, the proposed mark is “HARD CANDY SWEET CHEEKS” for “Cosmetics, namely liquid blush.” The registered mark is “SWEET CHEEKS” for “Cosmetics and body care products, namely, body scrubs; cosmetics and body care products, namely, moisturizers, namely, skin moisturizers; cleansers, namely, skin cleansers.”
The primary difference between the marks is that the proposed mark also features the wording “HARD CANDY.” However, the mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).
Therefore, the applicant’s mark, when used on or in connection with the identified goods, so resembles the registrant’s mark in sound, appearance, and/or meaning, as to be likely to cause confusion, to cause mistake, or to deceive consumers. Moreover, the parties’ goods are related and travel in the same channels of trade, as discussed below.
Relatedness of Goods and Trade Channels
In this case, the registrant’s goods are identified broadly as “cosmetics.” Therefore, it is presumed that the registration encompasses all goods of the type described, including “liquid blush,” which is in applicant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii).
In conclusion, the similarities in the marks’ sound, appearance, and meaning, and the relatedness of the parties’ goods support the Office’s refusal to register the mark under Section 2(d) of the Trademark Act.
There is no required format or form for responding to an 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 title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
Mary D. Munson-Ott
/Mary D. Munson-Ott/
Trademark Examining Attorney
Law Office 104
(571) 272-8955 (phone)
(571) 273-9104 (fax)
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.