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. 78688753 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Applicant’s Amended Mark is not a Material Alteration of the Original

The Examining Attorney has rejected Applicant’s amended drawing on the ground that it materially alters the essence or character of the mark.  Applicant respectfully traverses the examining Trademark Attorney’s finding and requests reconsideration of the same.

            The examining Trademark Attorney has asserted that Applicant’s mark cannot be amended as requested because the mark would be materially altered.  In Visa International Service Association v. Life-Code Systems, Inc., the Trademark Trial and Appeal Board (T.T.A.B.) established the standard for material alteration of trademarks: “The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.” 220 U.S.P.Q. 740, 743-44 (T.T.A.B. 1983). The test established in this case was, “whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition.”

 

Applicant’s Amended Mark Conveys the Same Commercial Impression as the Original. 

The Examining Attorney asserts that Applicant’s amendment would result in a material alteration of the mark.  According to TMEP §807.14, “the controlling question is always whether the old and new forms of the mark create essentially the same commercial impression.”  The examining Trademark Attorney stated that the omission of “Scent,” from Applicant’s amended trademark, changes the commercial impression of the mark.  Applicant respectfully disagrees and argues that the omission of a common, descriptive term, such as “Scent,” from the mark does nothing to change its commercial impression.  The essence of the Applicant’s original mark is retained in the amended mark.  Visually, the amended mark retains the essential features of the mark contained in the original application.  The words “Spring” and “Clean” remain completely unchanged.  The only change to the original mark is the omission of the word “Scent.”  Such a minor change does not constitute a material alteration of the mark and does not change its commercial impression.

Applicant’s argument is akin to the arguments presented in ­In re Larios S.A., 35 U.S.P.Q.2d 1214-18 (T.T.A.B. 1995).  In Larios, the applicant successfully sought to amend its mark by subtracting the adjective “Gran” or (“great” in Spanish)  from the beginning of its mark and the adding the preposition “De” (or “of” in Spanish) to its mark.  The examining trademark attorney rejected the amendment and applicant appealed.  The T.T.A.B. reasoned that the minor alterations to applicant’s mark indicated above changed “nothing of trademark significance” because the modified mark had the same essence as the original mark and created the same commercial impression as the original mark.  The T.T.A.B. also ruled that “a new search of the modified mark would not be required given…..the high degree of descriptiveness (and resultant lack of distinctiveness) inherent in the phrases “GRAN VINO” and “VINO DE.” 

Applicant argues that the word “Scent,” when used in relation to automatic dishwashing detergents, has little distinctive value and is at least as descriptive as the term “Gran” or “Great” as used in connection with wine in the Larios case.  In Larios, “Great” described the caliber of the wine.  In Applicant’s case, the term “Scent” was added to express that the SPRING CLEAN mark suggests athe distinctive fragrance unique to of the product.  However, when choosing automatic dishdish washing detergents, consumers are already aware that different variant names represent different fragrances.  So, consumers are already aware that SPRING CLEAN suggests a certain kind of aroma without the benefit of explanatory terms such as “Scent.”  The term “Scent” is therefore redundant. . Thus, omitting the term “Scent” from Applicant’s mark does not materially alter the commercial impression of the mark.

 

Applicant’s Amended Mark Does Not Necessitate Republication. 

The examining Trademark Attorney stated that the term “Scent” is not a generic term for the goods and that its omission changes the commercial impression of the mark.  Applicant respectfully disagrees and argues that the omission of a common, descriptive term from the mark, such as “Scent,” does nothing to change its commercial impression.  The practice of the U.S. Patent and Trademark Office in this very Office Action supports the conclusion that “Scent” is a highly descriptive term in reference to automatic dishwashing detergents.  In the instant Office Action, the The examining Trademark Attorney herself requested that “The applicant must insert a disclaimer of … ‘SCENT’ in the application because it is descriptive of a feature of the goods since the goods are presumably scented.” Applicant argues that since exclusive rights cannot adhere to the term “Scent” aswhen used on automatic dishwashing detergents, omission of thethis highly descriptive term in Applicant’s amended mark will not require republication in order to fairly present the mark for purposes of opposition. 

Finally, Applicant notes that it is the owner of U.S. Trademark Registration No. 2,207,670 for EARLY MORNING.(See copy of registration annexed hereto)    This mark was originally registered as EARLY MORNING SCENT; Applicant petitioned to U.S. Patent and Trademark Office to have “Scent” deleted from the mark contained in this registration.  The Office granted Applicant’s request on April 19, 2005.  As such, if the deletion of “Scent” from U.S. Registration No. 2,207,670 was not a material alteration of the mark, the deletion of “Scent” from U.S. Trademark Application No. 78,688,753 should also not be considered a material alteration of the mark.

Based on the foregoing, Applicant respectfully requests the examining Trademark Attorney to withdraw the refusal to accept Applicant’s amended drawing page for SPRING CLEAN.

 

Applicant’s Mark is Not Likely to be Confused with Registrant’s Mark

            The examining Trademark Attorney has refused to register Applicant’s mark on the grounds that it is likely to be confused with U.S. Trademark Registration No. 2,480,786 for SPRING CLEAN.  Applicant respectfully traverses the examining Trademark Attorney’s refusal to register its mark and requests reconsideration of the same.

            Applicant seeks to register its mark, SPRING CLEAN, for use in connection with “automatic dishwashing detergents.”  Applicant respectfully submits that its mark is not likely to be confused with Registrant’s mark in light of the differences in the goods ascribed to the marks, the strength of the Registrant’s mark and the level of sophistication of the given consumer. by Accordingly, there is no reasonable likelihood of confusion between Applicant’s mark and that of U.S. Registration No. 2480786.  See In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).

           

The Products are dissimilar and not interchangeable.   

            Although the goods covered by both Applicant’s and Registrant’s marks may be related in the sense that they all fall under the broad category of home care goods, the goods in question are very different and definitely not interchangeable.  Applicant’s mark is for use on automatic dishwashing detergents.  These productsdetergents can in no way be used as a substitute for Registrant’s all purpose household cleaning products.  Similarly, consumers canmay not use Registrant’s products in automatic dishwashers.  The examining Trademark Attorney calls to attention the similarity of the products by referencing them both as “detergent cleaners.”  The similarity Similarity of two products cannot be determined by virtue a basis of both being categorized under similarity by such a broad terms.  Such similarity would be akin to arguing that a household tap-water filter and an industrial factory filter are similar by virtue of the fact virtue that they are both considered “filters.”  Applicant respectfully argues that no consumer would attempt to use fabric detergents, or indeed any other product termed “detergent,” with the exception of automatic dishwashing detergents in their dishwasher.  Since the goods are different and cannot be substituted, the goods ascribed to Applicant’s and Registrant’s marks are sufficiently different so as not to cause a likelihood of confusion.

 

Registrant’s Mark is Weak and Highly Suggestive.  The mark SPRING CLEAN as applied to dishwashing detergents and other homecare products is highly suggestive.  To perform a “Spring Clean” is a common term for the action of tidying in a household.  Dictionary.com defines “Spring Cleaning” as “a complete cleaning of a place, as a home, done traditionally in the spring of the year.”  (See extract from Dictionary.com annexed hereto)  Highly suggestive terms are considered “weak.”  See Knapp-Monarch Co. v. Poloron Products, Inc., 134 U.S.P.Q. 412 (T.T.A.B. 1962).  Accordingly, Registrant’s marks are not distinct as applied to “dishwashing detergent” and other home care goods.   “If the common element of the conflicting marks [are words] that [are] ‘weak’ then this reduces the likelihood of confusion.”  3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:48 (4^th Ed.2002); See also Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 113 U.S.P.Q. 339 (C.C.P.A. 1957) (holding no likelihood of confusion between GREEN LEAF and BLACK LEAF marks as used on plant sprays); and Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 26 U.S.P.Q.2d 1583 (2d Cir. 1993) (holding no likelihood of confusion between PARENTS and PARENTS DIGEST marks as used in connection with magazines).  Since the trademark SPRING CLEAN is weak, Registrant’s ability to enforce it rights in its SPRING CLEAN mark are severely limited.  Since Registrant’s rights in its SPRING CLEAN mark are severely limited, its registration should not be able to block Applicants use and registration of SPRING CLEAN in connection with automatic dishwashing detergents.

 

 

Applicants Product is PurchasedBought by a Discerning Consumers.  Customer

            When a consumer is in the process of purchasing a product to clean dishesdishware they specifically purchase detergents manufactured for that very purpose.  They do not wander into a supermarket aisle and mistakenly purchase oven cleaner or a general purpose household house cleaning product with the intent of using it in their dishwasher, nor will they purchase automatic dishwashing detergent for any other purpose than cleaning dishes in their dishwasher..  The use of products not tailored for that very purpose in automatic dishwashers can be very harmful to the machine and will not clean dishes.  (A copy of literature demonstrating the correct use of dishwashing machines is annexed hereto)  Consumers are aware that putting even closelyThe closest related products such as product to the Applicant’s is hand dish liquid.  Consumers are aware that putting hand dish liquid or other detergents into an automatic dishwashing machine could cause flooding, the consequences of which can obviously be extremely serious to both the consumer’s home,  and even adjoining apartmentsones in the case of apartment buildings, and the dishwasher itself..  Automatic dishwashing machines are expensive investments which can cost up to and well over one thousand dollars. Applicant submits that consumers treat dishwashers as investments such and are highly discerning as to the products that they place inside them. (See Sears catalogue extract annexed hereto)  Applicant submits that if the ordinary consumer is aware of the need to buy only automatic dish washing detergent for use in dishwashers, there can be no confusion between Applicant’s and Registrant’s products, because if a consumer would not purchase highly similar goods such as hand dish liquid-soap for use in a dishwasher, they certainly would not purchase products so far a field as laundry detergent or any of the other Registrant’s products.

 

Based on the above, any possible likelihood of confusion between Applicant’s mark and Registrant’s marks is de minimus and Applicant respectfully requests the examining Trademark Attorney to withdraw refusal of Applicant’s Registration.

           

Evidence
Evidence in the nature of Internet sources for definitions of terms, on-line product catalogues, on-line how-to guides and copies of registration certificates. has been attached.
Original PDF file:
evi_192132225130-132440199_._ASKO_Dishwasher_use_and_care_Guide.pdf
Converted PDF file(s) (12 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
Original PDF file:
evi_192132225130-132440199_._Dishwasher_-_Wikipedia.pdf
Converted PDF file(s) (6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_192132225130-132440199_._Dishwashing_-_eHow.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_192132225130-132440199_._EARLY_MORNING_Registrations.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_192132225130-132440199_._Sears_Dishwashers.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_192132225130-132440199_._Spring_Cleaning_Dictionarycom.pdf
Converted PDF file(s) (1 page)
Evidence-1

Additional Statements

"Applicant claims ownership of U.S. Registration Number(s) 2446943."

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /MICHAELJSMITH/      Date: 09/01/2006
Signatory's Name: Michael J Smith
Signatory's Position: Attorney, Trademark & Copyright

Response Signature
Signature: /MICHAELJSMITH/     Date: 09/01/2006
Signatory's Name: Michael J Smith
Signatory's Position: Attorney, Trademark & Copyright
        
Serial Number: 78688753
Internet Transmission Date: Fri Sep 01 13:31:22 EDT 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20060901133122
572729-78688753-340b25bfd306e5a6b158ac42
678e39029af-N/A-N/A-20060901132440199318