Offc Action Outgoing

This is a PROVISIONAL PARTIAL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application that applies to only the following goods in the application: Toiletries; skincare preparations; cosmetics; cosmetic kits; hair care preparations; hair gel, hair wax, hair spritz, hairspray; spot sticks; moisturizers; shaving stones; abrasive materials for dental use (other than floss); abrasive materials for dental use (other than floss); abrasive substances for dental use (other than floss); abrasives (dental); anti-microbial, antiseptic and medical mouthwash preparations (gargles) for oral hygiene purposes; dental health gum (medicated). 15 U.S.C. §1141h(c).

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL:

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and

(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.

37 C.F.R. §10.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.

THE APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:

NOTE: This is a partial refusal Office action. The refusal(s) and/or requirement(s) in this Office action apply only to specified goods in the U.S. application.

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

Section 2(d) - Likelihood of Confusion Refusal

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN.

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2675862. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services. The overriding concern is to prevent buyer confusion as to the source of the goods and/or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

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.

Similar Marks

Applicant has applied to register the wording “BULL DOG” with a design featuring the head of a bull dog. Registrant’s mark is “THE BULLDOG SHOP.”

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., 753 F.2d 1056, 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 1987); TMEP §1207.01(b)(viii).

The dominant portion of registrant’s mark is the BULLDOG wording because “SHOP” is descriptive and does not have source-indicating significance. Disclaimed matter is typically less significant or less dominant when comparing marks. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). As such, the presence of a design in applicant’s mark does not obviate the likelihood of confusion. Moreover, this particular design does not serve to distinguish applicant’s mark because the image of the bull dog merely reinforces the impression of the “bull dog” wording in the mark.

The commercial impressions of the relevant marks are identical because of the use of the arbitrary wording “bull dog” for cosmetic and personal care items.

Related Goods/Services

The goods and 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 are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods 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).

This refusal is limited to the following goods in applicant’s identification: “cosmetics; cosmetic kits; hair care preparations; hair gel, hair wax, hair spritz, hairspray.” Registrant’s relevant services are “retails store services featuring… hair mousse; cosmetics….”

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion).

Registrant’s store services feature goods identical to applicant’s cosmetics and cosmetic kits. Applicant’s hair care preparations are also identical to registrant’s hair mousse because the broad wording of applicant’s goods encompasses registrant’s more specific goods. Additionally, applicant’s “hair gel, hair wax, hair spritz, hairspray” goods are highly related to registrant’s hair mousse goods because they are used for the same purposes, by the same types of consumers. Consumers are accustomed to hair care goods of one type, e.g. mousse, to be offered routine by the same source as the hair goods of another type, e.g. spray, etc.

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods and services listed therein, namely applicant’s and registrant’s cosmetics and hair products and retail store services featuring those goods, are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

Conclusion

Given the similarity of the marks and the goods and services, prospective customers are likely to confuse the source of the respective cosmetics and hair care goods. Accordingly, registration of applicant’s mark is properly refused under Section 2(d) of the Trademark Act.

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

Identification of Goods

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN.

The current wording used to describe the goods needs clarification in several respects.

First, the identification of goods and/or services contains parentheses. Generally, parentheses and brackets should not be used in identifications. TMEP §1402.12. Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.

Second, various wording in the identification is indefinite because more specificity is needed regarding the nature of the goods. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. The identification of goods must be specific and all-inclusive. TMEP §1402.01.

For information regarding the specific requirements for clarifying the wording in the identification, as well as specific suggestions, please refer below to the suggested identification. Information contained between brackets (such as “{}”) is informational and applicant must adopt wording following the guidance contained within.

Please note that the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).

Applicant may adopt the following identification of goods, if accurate:

“{Specify Class 3 type, e.g. non-medicated} toiletries; body deodorant, anti-perspirants, shower gel; body wash, facial cleanser, facial scrub; facial wash, hand wash, soaps; {specify Class 3 type, e.g. non-medicated} skincare preparations; body mist spray; spot sticks, namely {specify common commercial name, e.g. spot remover for laundry, non-medicated acne treatment prepration, etc.}; {specify Class 3 type, e.g. skin} moisturisers; body lotion, body moisturiser, facial moisturiser; shaving gel, shaving oil, shaving cream, shaving foam, shaving spritz, shaving soap, shaving stones, namely {specify Class 3 common commercial name; please note that sharpening stones are not in Class 3; an example of a Class 3 stone is “pumice stones for personal use”}; after-shave; after-shave gel, after-shave balm; hair removal preparations and creams, depilatory preparations, depilatory wax; hair care preparations; shampoo, conditioner, hair gel, hair wax, hair spritz, hairspray; perfumery; eau de toilette; essential oils; cosmetics; dentifrices; lip balm; moustache wax; cosmetic kits; sunscreen preparations,” in International Class 3;

“Anti-bacterial and medicated face, hand and skin washes; medicated preparations for the face, hands and skin; abrasive fluids for dental use; abrasive materials for dental use, other than floss; abrasive media for dental purposes other than floss; abrasive pads for dental use; abrasive paste for dental use; abrasive powder for dental use; abrasive substances for dental use other than floss; dental abrasives; adhesion promoters for dental use; adhesive cements for dental use; adhesive compositions and preparations for dental use; adhesives for affixing dental prosthesis; adhesives for dental use; anti-microbial, antiseptic and medical mouthwash preparations, gargles, for oral hygiene purposes; colouring reagents for revealing dental plaque; cotton for dental purposes; dental bonding material; medicated dental health gum; dental rinses, medicated; tablets for dental use in indicating tartar on the teeth,” in International Class 5.

TMEP §1402.01.

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

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

Advisory: Partial Abandonment

If applicant should fail to respond to this Office action within the six month time limit, then the following goods will be deleted from the application:

Toiletries; skincare preparations; cosmetics; cosmetic kits; hair care preparations; hair gel, hair wax, hair spritz, hairspray; spot sticks; moisturizers; shaving stones; abrasive materials for dental use (other than floss); abrasive materials for dental use (other than floss); abrasive substances for dental use (other than floss); abrasives (dental); anti-microbial, antiseptic and medical mouthwash preparations (gargles) for oral hygiene purposes; dental health gum (medicated)

The application will proceed forward for the remaining goods only.

37 C.F.R. §2.65(a).

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/RJ Povarchuk/

Rebecca J. Povarchuk

Trademark Examining Attorney

Law Office 115

Tel: (571) 270-1529

Fax: (571) 270-2529

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

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