Response to Office Action

Honorable Commissioner:

In response to the Office action mailed this past January 29, 2007, please amend the above referenced 
application as follows:

RE: LIKELIHOOD OF CONFUSION RESPONSE

The cited word mark AQUARIUS under registration No. 1982979 is used for perfumes. It is submitted that 
the likelihood of confusion between the registered mark on the one hand and AQUARIUS and Design for 
body lotions, body powder, body spray, creams for cellulite reduction, deodorants and antiperspirants, 
exfoliant creams, foot deodorant spray, lotions for cellulite reduction, non-medicated foot cream, shower 
and bath gel, and soaps is de minimus.

Favorable consideration on the issue of whether there is a likelihood of confusion between the above 
marks, in light of the following DuPont factors, is urged. In Re Du Pont, 476 F.2d 1357, 177 U.S.P.Q. 563 
(CCPA 1973). 

1)   Similarity and Dissimilarity of the Marks

Analysis under the sight and sound factors must consider the marks “in their entirety as assembled.” 
Holiday Casuals v. M. Beckerman and Sons, Inc., 108 U.S.P.Q. 140, 228 F.2d 224 (C.C.P.A., 1955). The 
marks must be considered in the whole as is “usually done in the marketplace.” Sears, Roebuck, & Co. v. 
Hofman, 119 U.S.P.Q 137 (C.C.P.A.). Additionally, “Even close similarity between two marks is not 
dispositive,” other factors must be considered too. Lever Bros. Co. v. American Bakeries Co., 693 F.2d 
251, 257, 216 U.S.P.Q. 177,182 (2d Cir. 1982).

     A. Sight

Applicant respectfully argues that under Section 2(d), when the marks are considered in their entireties, the 
sight is wholly dissimilar. “The visual impact of the marks on the minds of the prospective purchasers who 
use them” is different. Owens-Illinois Glass Co. v. Clevite Corp., 139 U.S.P.Q. 505, 324 F.2d 1010 
(C.C.P.A. 1963). On their face alone, it is clear that the visual impact of these two marks would not 
confuse a prospective consumer. Applicant’s mark is a composite design/word mark, whereas Registrant’s 
mark is a very simple word mark. Composite marks must be analyzed as a whole and not dissected. “The 
commercial impression of a composite trademark on an ordinary perspective buyer is created by the mark 
as a whole not by its component parts,” McCarthy on Trademarks and Unfair Competition, n. 23:41 at 
23-112 (4th Ed. 2001). In the instant case, Applicant’s design mark creates a wholly distinct commercial 
impression than that of Registrant’s word mark. 

Applicant respectively disagrees with the Examiner’s position that “The marks create the same commercial 
impression because the dominant portion of the marks is identical.” (Office Action of January 29, 2007). 
The Federal Circuit stated that, “There is no general rule as to whether letters or design will dominate in 
composite marks,” In re Electrolyte Laboratories, Inc., 929 F.2d 645, 16 U.S.P.Q.2d 1239 (Fed. Cir. 1990). 
The court in that case, in comparing a stylized word mark (K+) to a word mark (K+EFF), found that the 
commercial impression created by the stylized word mark was sufficiently distinct to preclude a likelihood 
of confusion between the applicant’s mark (K+) and the registered mark (K+EFF). The court went on to 
note that “A design is viewed, not spoken, and a stylized letter design cannot be treated simply as a word 
mark,” In re Electrolyte, 913 F.2d at 647, 16 U.S.P.Q.2d at 1240. 

In the instant case, the differences are even more striking. The design of the AQUARIUS creates four 
separate packets of visual information for consumer to perceive. The first element is the stylized term 
“aquarius.” Second, the line drawing under the term that emphasizes “arius” creates a second packet of 
visual information for consumers. Thirdly, the design of the kneeling woman is a highly distinctive 
element. Lastly, the design of the flower emerging from the vessel held by the kneeling woman combines 
both the drawing and the word, to not only join both elements, but to create a unique commercial 
impression. Registrant’s mark contains no such visual emphasis. These differences create a lasting, 
distinctive impression in consumer perception. A consumer is not likely to confuse this design mark with a 
mark as simple as Registrant’s word mark. 

Additionally, even in instances where the comparative analysis between two marks did not include a 
consideration of a design element, authorities have held that differences less striking than that between 
Applicant’s and Registrant’s marks sufficed to find no likelihood of confusion. In Jet-Pak, Inc. v. U.S. 
Plywood, Corp., 132 U.S.P.Q. 643, the Trademark Trial and Appeal Board held that the marks TEKPAK 
and JET-PAK were not similar and there was no likelihood of confusion. The same result was found in 
ConAgra, Inc. v. Saavedra, 4 U.S.P.Q.2d 1245 (T.T.A.B. 1987) between PATIO and TAPATIO for 
Mexican foods and condiments. 

     B. Sound

Applicant notes that if the Examiner finds that both marks are phonetically similar, the other elements in 
Applicant’s mark can, and Applicant contends do, lead to a finding of no likelihood of confusion. See 
Standard Brands, Inc. v. eastern Shore Canning Co., 172 F.2d 144, 80 U.S.P.Q. 318 (4th Cir.) (V-8 and 
VA, for vegetable and tomato juice respectively, no likelihood of confusion found).

     C. Meaning

Applicant respectfully argues that the meanings of the marks are wholly dissimilar. “If two conflicting 
marks each have an aura of suggestion, but each suggests something different to the buyer, this tends to 
indicate a lack of a likelihood of confusion,” McCarthy on Trademarks and Unfair Competition, n. 23:28 at 
23-83 (4th Ed. 2001). In the instant case, Applicant’s design mark suggests a variation on the typical 
image conjured by the word “aquarius.” Aquarius is traditionally associated with the image of a male 
water-bearer. However, Applicant’s mark associates the word directly to a female flower-bearer. This 
mental impact upon the consumer will imbue in Applicant’s products the concepts of femininity and 
growth. This particular meaning created by Applicant’s design mark is wholly different than any meaning 
possible in Registrant’s word mark. The simple word mark of Registrant creates no additionally, unique 
meaning. This difference in meaning can, and Applicant argues that in this case it does, obviate any 
likelihood of confusion arising from the word marks being closely similar. See Revlon, Inc. V. Jerell, Inc., 
713 F.Supp. 93, 11 U.S.P.Q.2d 1612, 1616 (S.D.N.Y. 1989) (“such differences of connotation and 
meaning are key factors in determining the likelihood of confusion. Differing connotations themselves can 
be determinative, even where identical words with identical meanings are used.”)

2)   Type of Goods 

Applicant respectfully argues that likelihood of confusion is obviated by the goods in question being 
sufficiently unrelated. The goods covered by Applicant’s mark are for body lotions, body powder, body 
spray, creams for cellulite reduction, deodorants and antiperspirants, exfoliant creams, foot deodorant 
spray, lotions for cellulite reduction, non-medicated foot cream, shower and bath gel, and soaps. 
Registrant’s mark is for perfumes. Applicant respectively notes that the parties’ marks are not used in 
connection with identical goods, as the Examiner had noted otherwise in the January 29, 2007 Office 
Action.
 3) Degree of Consumer Care

Applicant argues that any remaining likelihood of confusion is obviated by the degree of consumer care 
involved in the purchasing of these goods. Consumers of the relevant goods take extra care when 
expending monies on costly, luxury items such as body lotions, cellulite redactor creams, or perfumes. 
Beyond this heightened care in shopping for the relevant goods, people spend considerable time and 
resources to ensure that they convey the particular image they desire to the public. One’s look, one’s 
presentation (including olfactory presentation) to others is critical across all socio-economic levels. The 
expense of the goods and the care of the customer means that the relevant consumers are sophisticated 
consumers. Sophisticated consumers are far less likely to confuse Applicant’s composite design mark for 
body lotions, body powder, body spray, creams for cellulite reduction, deodorants and antiperspirants, 
exfoliant creams, foot deodorant spray, lotions for cellulite reduction, non-medicated foot cream, shower 
and bath gel, and soaps with Registrant’s word mark for perfume. The standard of care expected of these 
sophisticated consumers is higher and they are less likely to be confused by similar trademarks. McCarthy 
on Trademarks and Unfair Competition, n. 23:100 at 23-236 (4th Ed. 2001).
Thus, the careful consideration necessary in purchasing the goods in question reduces greatly the 
likelihood of confusion even if the marks are deemed very similar. Kiekhaefer Corp. v. Willys-Overland 
Motors, Inc., 236 F.2d 423, 111 U.S.P.Q. 105 (C.C.P.A. 1956); Beer Nuts, Inc. v. Clover Club Foods Co., 
805 F.2d 920, 925, 231 U.S.P.Q. 913, 916 (10th Cir. 1986). In NEC Electronics v. New England Circuit 
Sales, Inc., 722 F.Supp. 861, 13 U.S.P.Q.2d 1058 (D. Mass. 1989) the court held that the marks NEC and 
NECS were not likely to be confused despite both companies dealing in the same goods [computer chips] 
because the uses targeted sophisticated consumers.

RE: PENDING APPLICATIONS

Applicant notes that Serial No. 78840507 is now abandoned and requests that this obstacle to registration 
be removed.

Applicant contends that the above arguments apply equally to the cited application Serial No. 78840487. 
Therefore, Applicant incorporates those arguments herein by reference and requests that the Examiner hold 
that no likelihood of confusion exists as to this application. Alternatively, if the Examiner is not convinced 
by these arguments, Applicant requests that the Examiner suspend this application pending final disposition 
of this earlier-filed application.

In view of the foregoing, it is believed that the difference between Applicant’s mark and Registrant’s mark 
are not confusingly similar. The application as presently amended is deemed in condition for publication 
and prompt publication is respectfully requested. If for some reason the present amendment does not place 
the case in condition for publication, the Examiner is respectfully requested to call applicant’s attorney at 
(305) 669-9848 to discuss any possible further amendment of the like which places the case in condition 
for publication, or to arrange an Examiner’s amendment to put the case in condition for publication.

Respectfully submitted

Response to Office Action

To the Commissioner for Trademarks:

Honorable Commissioner:

In response to the Office action mailed this past January 29, 2007, please amend the above referenced 
application as follows:

RE: LIKELIHOOD OF CONFUSION RESPONSE

The cited word mark AQUARIUS under registration No. 1982979 is used for perfumes. It is submitted that 
the likelihood of confusion between the registered mark on the one hand and AQUARIUS and Design for 
body lotions, body powder, body spray, creams for cellulite reduction, deodorants and antiperspirants, 
exfoliant creams, foot deodorant spray, lotions for cellulite reduction, non-medicated foot cream, shower 
and bath gel, and soaps is de minimus.

Favorable consideration on the issue of whether there is a likelihood of confusion between the above 
marks, in light of the following DuPont factors, is urged. In Re Du Pont, 476 F.2d 1357, 177 U.S.P.Q. 563 
(CCPA 1973). 

1)   Similarity and Dissimilarity of the Marks

Analysis under the sight and sound factors must consider the marks “in their entirety as assembled.” 
Holiday Casuals v. M. Beckerman and Sons, Inc., 108 U.S.P.Q. 140, 228 F.2d 224 (C.C.P.A., 1955). The 
marks must be considered in the whole as is “usually done in the marketplace.” Sears, Roebuck, & Co. v. 
Hofman, 119 U.S.P.Q 137 (C.C.P.A.). Additionally, “Even close similarity between two marks is not 
dispositive,” other factors must be considered too. Lever Bros. Co. v. American Bakeries Co., 693 F.2d 
251, 257, 216 U.S.P.Q. 177,182 (2d Cir. 1982).

     A. Sight

Applicant respectfully argues that under Section 2(d), when the marks are considered in their entireties, the 
sight is wholly dissimilar. “The visual impact of the marks on the minds of the prospective purchasers who 
use them” is different. Owens-Illinois Glass Co. v. Clevite Corp., 139 U.S.P.Q. 505, 324 F.2d 1010 
(C.C.P.A. 1963). On their face alone, it is clear that the visual impact of these two marks would not 
confuse a prospective consumer. Applicant’s mark is a composite design/word mark, whereas Registrant’s 
mark is a very simple word mark. Composite marks must be analyzed as a whole and not dissected. “The 
commercial impression of a composite trademark on an ordinary perspective buyer is created by the mark 
as a whole not by its component parts,” McCarthy on Trademarks and Unfair Competition, n. 23:41 at 
23-112 (4th Ed. 2001). In the instant case, Applicant’s design mark creates a wholly distinct commercial 
impression than that of Registrant’s word mark. 

Applicant respectively disagrees with the Examiner’s position that “The marks create the same commercial 
impression because the dominant portion of the marks is identical.” (Office Action of January 29, 2007). 
The Federal Circuit stated that, “There is no general rule as to whether letters or design will dominate in 
composite marks,” In re Electrolyte Laboratories, Inc., 929 F.2d 645, 16 U.S.P.Q.2d 1239 (Fed. Cir. 1990). 
The court in that case, in comparing a stylized word mark (K+) to a word mark (K+EFF), found that the 
commercial impression created by the stylized word mark was sufficiently distinct to preclude a likelihood 
of confusion between the applicant’s mark (K+) and the registered mark (K+EFF). The court went on to 
note that “A design is viewed, not spoken, and a stylized letter design cannot be treated simply as a word 
mark,” In re Electrolyte, 913 F.2d at 647, 16 U.S.P.Q.2d at 1240. 

In the instant case, the differences are even more striking. The design of the AQUARIUS creates four 
separate packets of visual information for consumer to perceive. The first element is the stylized term 
“aquarius.” Second, the line drawing under the term that emphasizes “arius” creates a second packet of 
visual information for consumers. Thirdly, the design of the kneeling woman is a highly distinctive 
element. Lastly, the design of the flower emerging from the vessel held by the kneeling woman combines 
both the drawing and the word, to not only join both elements, but to create a unique commercial 
impression. Registrant’s mark contains no such visual emphasis. These differences create a lasting, 
distinctive impression in consumer perception. A consumer is not likely to confuse this design mark with a 
mark as simple as Registrant’s word mark. 

Additionally, even in instances where the comparative analysis between two marks did not include a 
consideration of a design element, authorities have held that differences less striking than that between 
Applicant’s and Registrant’s marks sufficed to find no likelihood of confusion. In Jet-Pak, Inc. v. U.S. 
Plywood, Corp., 132 U.S.P.Q. 643, the Trademark Trial and Appeal Board held that the marks TEKPAK 
and JET-PAK were not similar and there was no likelihood of confusion. The same result was found in 
ConAgra, Inc. v. Saavedra, 4 U.S.P.Q.2d 1245 (T.T.A.B. 1987) between PATIO and TAPATIO for 
Mexican foods and condiments. 

     B. Sound

Applicant notes that if the Examiner finds that both marks are phonetically similar, the other elements in 
Applicant’s mark can, and Applicant contends do, lead to a finding of no likelihood of confusion. See 
Standard Brands, Inc. v. eastern Shore Canning Co., 172 F.2d 144, 80 U.S.P.Q. 318 (4th Cir.) (V-8 and 
VA, for vegetable and tomato juice respectively, no likelihood of confusion found).

     C. Meaning

Applicant respectfully argues that the meanings of the marks are wholly dissimilar. “If two conflicting 
marks each have an aura of suggestion, but each suggests something different to the buyer, this tends to 
indicate a lack of a likelihood of confusion,” McCarthy on Trademarks and Unfair Competition, n. 23:28 at 
23-83 (4th Ed. 2001). In the instant case, Applicant’s design mark suggests a variation on the typical 
image conjured by the word “aquarius.” Aquarius is traditionally associated with the image of a male 
water-bearer. However, Applicant’s mark associates the word directly to a female flower-bearer. This 
mental impact upon the consumer will imbue in Applicant’s products the concepts of femininity and 
growth. This particular meaning created by Applicant’s design mark is wholly different than any meaning 
possible in Registrant’s word mark. The simple word mark of Registrant creates no additionally, unique 
meaning. This difference in meaning can, and Applicant argues that in this case it does, obviate any 
likelihood of confusion arising from the word marks being closely similar. See Revlon, Inc. V. Jerell, Inc., 
713 F.Supp. 93, 11 U.S.P.Q.2d 1612, 1616 (S.D.N.Y. 1989) (“such differences of connotation and 
meaning are key factors in determining the likelihood of confusion. Differing connotations themselves can 
be determinative, even where identical words with identical meanings are used.”)

2)   Type of Goods 

Applicant respectfully argues that likelihood of confusion is obviated by the goods in question being 
sufficiently unrelated. The goods covered by Applicant’s mark are for body lotions, body powder, body 
spray, creams for cellulite reduction, deodorants and antiperspirants, exfoliant creams, foot deodorant 
spray, lotions for cellulite reduction, non-medicated foot cream, shower and bath gel, and soaps. 
Registrant’s mark is for perfumes. Applicant respectively notes that the parties’ marks are not used in 
connection with identical goods, as the Examiner had noted otherwise in the January 29, 2007 Office 
Action.
 3) Degree of Consumer Care

Applicant argues that any remaining likelihood of confusion is obviated by the degree of consumer care 
involved in the purchasing of these goods. Consumers of the relevant goods take extra care when 
expending monies on costly, luxury items such as body lotions, cellulite redactor creams, or perfumes. 
Beyond this heightened care in shopping for the relevant goods, people spend considerable time and 
resources to ensure that they convey the particular image they desire to the public. One’s look, one’s 
presentation (including olfactory presentation) to others is critical across all socio-economic levels. The 
expense of the goods and the care of the customer means that the relevant consumers are sophisticated 
consumers. Sophisticated consumers are far less likely to confuse Applicant’s composite design mark for 
body lotions, body powder, body spray, creams for cellulite reduction, deodorants and antiperspirants, 
exfoliant creams, foot deodorant spray, lotions for cellulite reduction, non-medicated foot cream, shower 
and bath gel, and soaps with Registrant’s word mark for perfume. The standard of care expected of these 
sophisticated consumers is higher and they are less likely to be confused by similar trademarks. McCarthy 
on Trademarks and Unfair Competition, n. 23:100 at 23-236 (4th Ed. 2001).
Thus, the careful consideration necessary in purchasing the goods in question reduces greatly the 
likelihood of confusion even if the marks are deemed very similar. Kiekhaefer Corp. v. Willys-Overland 
Motors, Inc., 236 F.2d 423, 111 U.S.P.Q. 105 (C.C.P.A. 1956); Beer Nuts, Inc. v. Clover Club Foods Co., 
805 F.2d 920, 925, 231 U.S.P.Q. 913, 916 (10th Cir. 1986). In NEC Electronics v. New England Circuit 
Sales, Inc., 722 F.Supp. 861, 13 U.S.P.Q.2d 1058 (D. Mass. 1989) the court held that the marks NEC and 
NECS were not likely to be confused despite both companies dealing in the same goods [computer chips] 
because the uses targeted sophisticated consumers.

RE: PENDING APPLICATIONS

Applicant notes that Serial No. 78840507 is now abandoned and requests that this obstacle to registration 
be removed.

Applicant contends that the above arguments apply equally to the cited application Serial No. 78840487. 
Therefore, Applicant incorporates those arguments herein by reference and requests that the Examiner hold 
that no likelihood of confusion exists as to this application. Alternatively, if the Examiner is not convinced 
by these arguments, Applicant requests that the Examiner suspend this application pending final disposition 
of this earlier-filed application.

In view of the foregoing, it is believed that the difference between Applicant’s mark and Registrant’s mark 
are not confusingly similar. The application as presently amended is deemed in condition for publication 
and prompt publication is respectfully requested. If for some reason the present amendment does not place 
the case in condition for publication, the Examiner is respectfully requested to call applicant’s attorney at 
(305) 669-9848 to discuss any possible further amendment of the like which places the case in condition 
for publication, or to arrange an Examiner’s amendment to put the case in condition for publication.

Respectfully submitted