UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 6/27/2012

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of issues

 

Ø  Section 2(d) Refusal-Likelihood of Confusion

Ø  Prior Pending Applications

Ø  Claim of Ownership of Cited Registrations

Ø  Claim of Ownership of Prior Registrations

 

Applicant should note the following ground for refusal.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3895971 and 3745064.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant has applied to register “CLEARASIL ULTRA” for “Disposable wipes and pads impregnated with non-medicated skin cleansers; body wash; Disposable wipes impregnated with medicated skin cleansers; medicated body wash.”  The registered marks are “CLEARASIL ULTRACLEAR” for “Non-medicated toiletries; non-medicated skin care preparations; cosmetics; pre-moistened cosmetic facial wipes and pads; cosmetic make-up removal pads for the face; pre-moistened make up removal wipes and pads, cotton wool in the form of wipes and pads for cosmetic use; hair care preparations; soaps, perfumes and essential oils; dentifrices; Pharmaceutical preparations and substances for the treatment of acne and pimples; medicated skin care preparations; preparations for treatment of acne” and “CLEARASIL ULTRA PIMPLE BLOCKER PEN” for “medicated preparations for the treatment of acne, blemishes and for skin care; pen-shaped applicators containing medicated skin care preparations, namely, topical treatments for acne, blemishes and skin conditions; pharmaceutical preparations for the treatment of acne, skin blemishes and skin conditions.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  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 be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

In the present case, applicant’s mark “CLEARASIL ULTRA” and registrant’s marks “CLEARASIL ULTRACLEAR” and “CLEARASIL ULTRA PIMPLE BLOCKER PEN” contain the identical wording “CLEARASIL.”  The wording “CLEARASIL” appears as the first word in the parties’ marks and consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).  For this reason, the identical wording “CLEARASIL” creates a similar overall commercial impression between the parties’ marks.

 

 

For the above stated reasons, the applied-for mark “CLEARASIL ULTRA” is found to be highly similar to the registered marks “CLEARASIL ULTRA PIMPLE BLOCKER PEN” and “CLEARASIL ULTRACLEAR” in sound, appearance and meaning.  Accordingly, the marks create similar overall commercial impressions thereby satisfying the first prong of the likelihood of confusion test.

 

Comparison of Goods

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

Here, applicant seeks registration for “Disposable wipes and pads impregnated with non-medicated skin cleansers; body wash; Disposable wipes impregnated with medicated skin cleansers; medicated body wash.”  Registrant has protection for “Non-medicated toiletries; non-medicated skin care preparations; cosmetics; pre-moistened cosmetic facial wipes and pads; cosmetic make-up removal pads for the face; pre-moistened make up removal wipes and pads, cotton wool in the form of wipes and pads for cosmetic use; hair care preparations; soaps, perfumes and essential oils; dentifrices; Pharmaceutical preparations and substances for the treatment of acne and pimples; medicated skin care preparations; preparations for treatment of acne; medicated preparations for the treatment of acne, blemishes and for skin care; pen-shaped applicators containing medicated skin care preparations, namely, topical treatments for acne, blemishes and skin conditions; pharmaceutical preparations for the treatment of acne, skin blemishes and skin conditions.”  The parties’ goods are the type that would emanate from a single source because the goods are the type sold to consumers seeking skin cleansers.  Accordingly, the goods would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source. 

 

In order to demonstrate that the goods of the parties travel in the same commercial channels of trade, the examining attorney has attached a sampling of a search conducted on the Internet.  This evidence conclusively demonstrates that the goods of the parties are marketed and sold through the same channels of trade.  See the attached web pages from: http://www.neutrogena.com; http://www.proactiv.com; http://search.ulta.com; http://www.murad.com and http://www.sephora.com.  More specifically, see the attached web pages from http://search.ulta.com, which demonstrates that the goods body wash, wipes, cosmetics, fragrances, hair care and acne treatment goods are offered together.  The attached internet evidence indicates that the parties’ goods are related.

 

Since the marks create similar overall commercial impressions and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods.  Therefore, registration is refused under Section 2(d) of the Trademark Act. 

 

Prior pending applications

 

The filing dates of pending U.S. Application Serial Nos. 85378169 and 77667864 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

APPLICANT HAS RIGHT TO RESPOND

 

Although applicant’s mark has been refused registration under Section 2(d) of the Trademark Act, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  

 

Furthermore, in response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If the applicant chooses to respond to the Section 2(d) refusal, the applicant must also address the requirement(s) set forth below.

 

Claim of ownership of cited registrations

 

If the marks in the cited registrations and the marks in the potentially conflicting prior-filed applications have been assigned to applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)  Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)  Submit copies of documents evidencing the chain of title.

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  Applicant is the owner of U.S. Registration Nos. 3895971 and 3745064 and applicant is the owner of Application Serial Nos. 85378169 and 77667864. 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Claim of ownership of prior registrations

 

If applicant owns U.S. Registration Nos. 3068968; 3621076 and 2710837, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 3068968; 3621076 and 2710837.

 

Response guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Ameen Imam/

Examining Attorney

Law Office 113

(571) 272-1942

ameen.imam@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 6/27/2012 FOR

SERIAL NO. 85594648

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 6/27/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.