UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 11/12/2008

 

This action responds to the applicant’s correspondence filed on October 31, 2008, in which the applicant contested the refusal to register the proposed mark due to likelihood of confusion with U.S. Registration No. No. 3412696. After carefully considering the applicant’s arguments and evidence, the examining attorney was not persuaded to with the Section 2(d) refusal and thus, it is continued and maintained.

 

Upon further consideration, the assigned examining attorney has reviewed the referenced application and determined the following.  Every attempt is made to address all relevant issues in the first examination of trademark applications.  The examining attorney regrets any inconvenience to the applicant at this time.

 

Section 2(d) Refusal - CONTINUED

The examining attorney continues and maintains  the refusal to register under Trademark Act §2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 3412696  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  Registration previously enclosed.

As previously noted, Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.  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.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

Similarity of Marks

 

As previously noted, 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).

 

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 marks sound similar because they both feature the identical wording “SWEET CHEEKS.” Additionally, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

As previously noted by the examining attorney, the primary difference between the marks is that the proposed mark also features the wording “HARD CANDY.” The applicant argues that the addition of its house mark “HARD CANDY” to “SWEET CHEEKS” creates a commercial impression distinguishable from the registered mark, “SWEET CHEEKS.”

However, when marks are otherwise virtually the same, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks; it is likely that the two products sold under such marks would be attributed to the same source.  In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE STIC for general purpose adhesive in stick form likely to be confused with UHU GLU STIC for adhesives for paper and stationery); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982) (holding SKIN SAVERS for face and throat lotion likely to be confused with MENNEN SKIN SAVER for hand and body lotion); see Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d 662, 663, 143 USPQ 237, 238 (C.C.P.A. 1964) (holding HAMMERMILL E-Z CARRY PAK and E-Z PAPER PAK for carrying cases or boxes for typewriter or duplicator paper likely to be confused with E-Z PAK and E-Z CARI for paper bags); 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

 

Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, the registrant’s “cosmetics” are identified broadly.  Therefore, it is presumed that the registration encompasses all goods of the type described, including the applicant’s “cosmetics, namely liquid blush,” 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).

 

The applicant argues that there is no evidence of actual confusion between the proposed mark and the registered mark, or the registered mark and other users of the mark “SWEET CHEEKS.” The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion.  It is unnecessary to show actual confusion in establishing likelihood of confusion.  TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990).  The Trademark Trial and Appeal Board stated as follows:

                                                            

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).

 

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).

 

Moreover, evidence of actual confusion between third parties, or the absence of it, is irrelevant in ex parte proceedings.

 

Finally, the applicant argues that consumer confusion is not likely because purchasers of cosmetics “have a relatively high level of sophistication with respect to the selection of such goods...” The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).

 

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. The Section 2(d) refusal is continued and maintained.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement(s) set forth below.

 

Disclaimer Requirement

 

Applicant must disclaim the descriptive wording “CHEEKS” apart from the mark as shown because it merely describes the intended use of the applicant’s goods, “cosmetics, namely, liquid blush.”  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). See attached dictionary definition.

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “CHEEKS” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

 

Response Guidelines

 

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. 

 

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

 

 

 

 

 

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: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 11/12/2008 FOR

APPLICATION SERIAL NO. 78563090

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78563090&doc_type=OOA&mail_date=20081112 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 11/12/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.