UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/361802
APPLICANT: Today's WomenCare Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: TODAY
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CORRESPONDENT’S REFERENCE/DOCKET NO: 103270.14149
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/361802
The assigned examining attorney has reviewed the referenced application and determined the following.
Section 2(d) - Likelihood of Confusion Refusal
The examining attorney refuses registration under Trademark Act Section 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. 1387999 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
Applicant seeks to register the mark TODAY for “Preparations for body and beauty care, namely, preparations for skin care and face care in the form of creams, gels and lotions; skin care creams, skin care milks, skin care lotions, skin cleansers, make-up removers, face, eyes and body masks, facial soaps, facial washes, body shampoos and washes, bath and shower gels, body moisturizers and body soaps, skin creams, skin lotions, skin soaps, liquid body soaps and skin moisturizers; face and body exfoliants and scrubs, facial toners; deodorants for personal use; women's shaving gels, creams and foams; bath and shower products, namely, bath oils, bath foams, bath salts, bath beads and bath scrubs; sunscreens and sun block preparations, in Class 3; and Medicated preparations for body and beauty care, namely, preparations for skin in the form of creams, gels and lotions; medicated dermatological preparations for treatment of eczema, psoriasis, acne and dermatological conditions; medicated sun tan lotion and oil; medicated wrinkle removal and treatment skin care preparations; medicated skin ointments, creams and gels, in Class 5.”
Registrant’s mark is TODAY for “personal lubricant.”
The terms TODAY and TODAY are identical in appearance sound and connotation.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq.
The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). TMEP §1207.01(b)(viii).
Clearly, the respective marks are identical.
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i).
If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
Both applicant and registrant provide types of lotions and lubricants for body and/or skin care. Accordingly, the goods are similar.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The examining attorney encloses information regarding pending Application Serial No. 76/531550. The filing date of the referenced application precedes the applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
The wording “preparations for body and beauty care” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “non-medicated preparations for body and beauty care,” if accurate. TMEP §1402.01.
The wording “sunscreens” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “sunscreen [specify, e.g., creams, lotions],” if accurate. TMEP §1402.01.
The wording “medicated sun tan lotion and oil” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “medicated sunburn lotion and oil,” if accurate. TMEP §1402.01. In the alternative, applicant must explain the medicinal purpose of its “sun tan” lotion and oil.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
To reach the undersigned attorney by telephone after October 21, 2004, please call (571) 272 - 9477. Thank you.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Marc Leipzig/
Trademark Examining Attorney
Law Office 115
(703) 308-9115 x428 (phone)
(703) 746-3036 (fax)
marc.leipzig@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.