Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  79/018164

 

INTERNATIONAL REGISTRATION NO. 0869551  

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  15 U.S.C. §1141h(c).

 

APPLICANT OR ATTORNEY CAN RESPOND TO PROVISIONAL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. 

 

NOTE:  Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:

 

(1)     Attorneys who are in good standing with the bar of any United States court or the highest court of any state may practice before the Office in trademark matters.

(2)     A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office.  Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion.  A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices.  TMEP §602.

 

The Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

If applicant is not represented by an attorney, applicant may appoint a domestic representative who would receive correspondence from the Office and be served process or notice of proceedings affecting the application.  15 U.S.C. §1141h(d); 37 C.F.R. §2.24.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

Likelihood of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No.  1412853.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

The applicant applied to register GOLDWELL & design for   “Hair care and hair treatment preparations such as shampoos, preparations for the bleaching, dyeing and tinting of hair, permanent wave preparations and neutralizers therefor, setting lotions, hair conditioning and rinsing preparations, hair sprays, hair styling preparations, hair foams, hair lotions, hair waxes, hair lacquers;” “Printed matter such as books, advertising material, catalogues, magazines, descriptions, instructions, information, training and teaching material;” and “Providing of training and further training for hairdressers.” 

 

The registered mark is GOLDWELL OXY-CRÈME for   “HAIR BLEACHING PREPARATION, PEROXIDE FOR USE WITH HAIR DYES..”

 

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods/services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

In this case, the applicant and the registrant use the identical wording GOLDWELL.  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 e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 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) and (b)(iii).

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

In this case, the goods and are highly related if not identical, and could be used by the same customers, e.g. those in the hair care industry.  Even if consumers were to notice the differences in the respective marks, they may well believe that due to the shared term GOLDWELL the goods/services offered by applicant under the its mark represents related goods and services from the registrant.

 

If the mark in the cited registration has been assigned to applicant, then applicant must prove ownership of that mark.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the mark to applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.02(a).

 

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 issues.

 

Indefinite Identification of Goods/Services

The identification of goods is unacceptable as indefinite.  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  Applicant should amend the identification to replace “such as” with "namely."  Please note that applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

In Class 16 please note that applicant must amend the identification of goods to delete any items used merely to conduct its internal business.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.06(b).  Use of a mark on advertising material, catalogues, “descriptions,” and instructions sold with the goods, is not considered trademark use if these items are not goods that an applicant provides to others but are rather incidental items used in conducting a business enterprise.  TMEP §§1202.06 et seq.

 

TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following identification, if accurate:    TMEP §1402.01.

 

Class 3

Hair care and hair treatment preparations namely shampoos, preparations for the bleaching, dyeing and tinting of hair, permanent wave preparations and neutralizers therefor, setting lotions, hair conditioning and rinsing preparations, hair sprays, hair styling preparations, hair foams, hair lotions, hair waxes, hair lacquers

 

Class 16

Printed matter namely books, catalogues, magazines, information, training and teaching material in the fields of [specify field, e.g. “on hairdressing and methods for hair care”]

 

Class 41 is accepted.

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

Color Description Required

Applicant must provide a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).  The following description is suggested:  “The wording is in black and the square is red.”  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

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

 

 

 

 

/Brian Neville/

Trademark Examining Attorney

Law Office 114

(571) 272 - 9203

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.