Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 78563090 has been amended as follows:

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

The Applicant has noted the examiner's refusal to register the above-referenced mark on the Principal Register under Section 2(d), 15 U.S.C. §1052(d) based on the examiner's position that there is a potential likelihood of confusion with respect to the mark "SWEET CHEEKS" registered under U.S. Registration No. 3,412,696 as used in connection with cosmetics and body care products, namely, body scrubs, cosmetics and body care products, skin moisturizers and skin cleansers and requests reconsideration in light of the following discussion of such refusal.

The Applicant respectfully submits that confusion is not likely between "SWEET CHEEKS" used in connection with the goods described above, and the mark "HARD CANDY SWEET CHEEKS" as used in connection with the Applicant's cosmetics, namely, liquid blush.  Likelihood of confusion generally arises when a mark is confusingly similar in sound, meaning, or appearance to a mark or trade name which has been previously used by another for similar or related goods or services.  Marks are considered to be confusingly similar if, for example, customers purchasing the goods are likely to be confused as to whether the concerns manufacturing and/or selling products are affiliated, connected or associated.  In determining likelihood of confusion, two marks are not to be viewed side by side; rather, the second mark should be compared against one's mental image or recollection of the first.

There is no litmus rule which can provide a ready guide to all cases.  In testing for likelihood of confusion, the following factors are considered:

(1)        The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2)        The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3)        The similarity or dissimilarity of established, likely-to-continue trade channels.

(4)        The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.

(5)        The fame of the prior mark (sales, advertising, length of use).

(6)        The number and nature of similar marks in use on similar goods.

(7)        The nature and extent of any actual confusion.

(8)        The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.

(9)        The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).

(10)      The market interface between applicant and the owner of a prior mark:

(a)        a mere "consent" to register or use.

(b)        agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party.

(c)        assignment of mark, application, registration and goodwill of the related business.

(d)        laches and estoppel attributable to the owner of prior mark and indicative of lack of confusion.

(11)      The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12)      The extent of potential confusion, i.e., whether de minimis or substantial.

(13)      Any other established fact probative of the effect on use.

TMEP § 1207.01.

Differences Between the Marks

Registration No. 3,412,696 covers the mark "SWEET CHEEKS" whereas the Applicant's mark is "HARD CANDY SWEET CHEEKS."  The marks are similar in that they both have the words "SWEET" and "CHEEKS."  However, "HARD CANDY SWEET CHEEKS," as used with liquid blush, creates a distinguishable commercial impression from "SWEET CHEEKS" by itself.  The Applicant respectfully submits that the dominant feature of the Applicant's mark is not "SWEET CHEEKS."  On the contrary, the Applicant's well-known registered "HARD CANDY" mark appears as the first words of the Applicant's mark.  The Applicant owns numerous registrations for its "HARD CANDY" family of marks in both the U.S. and in numerous foreign countries and the inclusion of "HARD CANDY" in the Applicant's mark conveys a distinguishable commercial impression and avoids any potential confusion. See copies of registration U.S. registration listings for HARD CANDY in the U.S. enclosed with this response (Registration Nos. 2,567,186; 2,552,029; 2,666,793; 2,362,340; 2,343,732; 2,360,102; 2,666,792, 2,150,397, 1,987,262, 2,629,363). The primary components of the Applicant's mark are HARD CANDY. The cases cited by the examiner as supporting the proposition that a house mark added to other words does not make a difference involved fact-specific rulings specific to the cited cases; each case must be decided on its own facts and circumstances.  While the examiner has stated that the inclusion of HARD CANDY in the Applicant's mark generally does not obviate the similarity between marks or overcome a likelihood of confusion, exceptions to the general rule regarding additions or deletions to marks may arise if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted (as is the case here). See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics).  The present case is analogous to the cases cited above wherein it was concluded that there was no likelihood of confusion. 

Similarity or dissimilarity in connotation is a consideration in determining whether there is a likelihood of confusion between marks.  TMEP § 1207.01(b)(i).  "The meaning or connotation of a mark must be determined in relationship to the named goods or services.  Even marks which are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties' goods or services so that there is no likelihood of confusion.  Id.; In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (holding that CROSS-OVER for bras was not likely to be confused with CROSSOVER for ladies' sportswear); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (holding that PLAYERS for men's underwear was not likely to be confused with PLAYERS for shoes); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (holding that BOTTOMS UP for ladies' and children's underwear was not likely to be confused with BOTTOMS UP for men's clothing).  "HARD CANDY SWEET CHEEKS," compared in its entirety as is required with "SWEET CHEEKS," is sufficiently distinguishable so as to avoid a potential likelihood of confusion.  The Applicant's mark looks different in that it has four words and begins with the house mark HARD CANDY, which in the present case does convey a distinguishable commercial impression, particularly when considering the number of third party coexisting uses of the words "Sweet Cheeks" which indicates that the mark covered by the registration cited by the examiner is not owned exclusively by the owners of the cited registration and should not be given such broad protection.  The common portion of the marks is not likely to be perceived by consumers as indicating source when so many different sources use the same terms with similar goods/services.

Numerous Coexisting Uses of "Sweet Cheeks" in Connection with Similar Goods/Related Services

As shown by the evidence enclosed with this response (Exhibits 1-13), there are numerous coexisting third party uses of the terms "Sweet Cheeks" in connection with various cosmetics products and related services.  See, e.g., www.sweet-cheeks.net, www.eaudesweetcheeks.com, www.sweetcheeksco.com, www.sweetcheeksboutique.net, Sweet Cheeks Baked Blush from Sugar Cosmetics, Sweet Cheeks Boutique (skin care), Tropez Sweet Cheeks Powder Blush, Sweet Cheeks Studio (skin and body care), Laura Geller Sweet Cheeks Blush, Dessert Beauty Sweet Cheeks Blushing Cream, Beth Bender Sweet Cheeks Powder Blush, the Applicant's own HARD CANDY SWEET CHEEKS LIQUID BLUSH, which has been in use for over a couple of years without evidence of actual confusion, Sweet Chic Cheeks Mineral Blush, and Paula Dorf Sweet Cheeks Spring Blush.  The examples provided are not an exhaustive list of examples. Nevertheless, there are at least a dozen coexisting uses of SWEET CHEEKS by different parties with similar/related goods or services. Clearly, the owners of the registration cited by the examiner do not have anything close to exclusive rights, and HARD CANDY SWEET CHEEKS is sufficiently distinguishable and creates a distinguishable commercial impression when considered in the proper context in light of the evidence.

Purchaser Sophistication

Additionally, potential purchasers of cosmetics-type goods have a relatively high level of sophistication with respect to the selection of such goods and such goods are relatively expensive, and purchasing decisions with respect to same involve considerable deliberation, making confusion even less likely.

Other Factors

The cited mark is not famous and does not appear to be a house mark, factors that weigh against a finding of a likelihood of confusion.

In sum, the Applicant respectfully submits that analysis of the factors used in determining likelihood of confusion between marks indicates that the Applicant's mark should not be refused registration based on a likelihood of confusion in the minds of consumers with the "SWEET CHEEKS" mark registered under Registration No. 3,412,696.  The Applicant respectfully submits that the mark registered under said registration is not entitled to such broad protection.

It is respectfully urged that the application, in view of the foregoing, is in condition for publication, and it is courteously requested that the examiner conclude examination of the application and approve it for publication. 

EVIDENCE
Evidence in the nature of copies of web printouts showing multiple third party uses of sweet cheeks, and copies of Hard Candy trademark registration listings on USPTO website has been attached.
Original PDF file:
evi_69258138-154857630_._sweetcheeksevidence.pdf
Converted PDF file(s) (37 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
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Evidence-19
Evidence-20
Evidence-21
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Evidence-25
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Evidence-29
Evidence-30
Evidence-31
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Evidence-34
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Evidence-36
Evidence-37
Original PDF file:
evi_69258138-154857630_._sweetcheeksevidence2.pdf
Converted PDF file(s) (20 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /manuel valcarcel/     Date: 10/31/2008
Signatory's Name: manuel valcarcel
Signatory's Position: attorney for applicant, Florida bar member

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: 78563090
Internet Transmission Date: Fri Oct 31 15:58:36 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-200810311558366373
82-78563090-430ac60ff933a715d3cb85622d86
4da181-N/A-N/A-20081031154857630627