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: 8/25/2012

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

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.

 

LIKELIHOOD OF CONFUSION

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 3461969.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and continued.

 

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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

The applicant seeks registration for the mark “MICHAEL TODD TRUE ORGANICS” for

“Aromatic body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Bath soaps in liquid, solid or gel form; Beauty creams for body care; Beauty gels; Beauty lotions; Beauty masks; Beauty serums; Body lotions; Body oils; Body wash; Cleansing creams; Cosmetic creams for skin care; Cosmetic masks; Cosmetic nourishing creams; Cosmetic oils; Cosmetic preparations for body care; Cosmetic preparations for skin care; Cosmetic preparations for skin renewal; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Essential oils for personal use; Face and body creams; Face and body lotions; Face creams for cosmetic use; Facial beauty masks; Foam cleansers for personal use; Fragranced body care preparations, namely, washes and lotions; Fragranced face care preparations, namely, washes, toners, moisturizers and masks; Lotions for face and body care; Moisturizing preparations for the skin; Non-medicated cleansers for personal use, namely, face and body washes and scrubs; Non-medicated facial and eye serum containing antioxidants; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin toners; Non-medicated stimulating lotions for the skin; Skin care products, namely, non-medicated skin serum; Skin clarifiers; Skin cleansing lotion; Skin creams; Skin masks; Skin moisturizer masks; Skin toners.”

 

The registered mark is “BRIGIT TRUE ORGANICS” for “Bar soap; Bath soaps; Bath soaps in liquid, solid or gel form; Body cream soap; Hand soaps; Body creams; Lip balm; Skin care preparations, namely, body balm; After-sun lotions; Baby lotion; Bath lotion; Body lotion; Massage oil; Baby oil; Aromatherapy body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Cosmetic creams for skin care; Non-medicated foot cream; all being organic.”

 

COMPARISION OF THE MARKS

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  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.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (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, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

Both marks contain the wording “TRUE ORGANICS.”  It appears the applicant has merely substitute the name “MICHAEL TODD” for the name “BRIGIT” in the registered mark.  The marks create a highly similar commercial impression and will likely create confusion in the marketplace. 

 

COMPARISION OF THE GOODS

The goods 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 that the goods and/or services are related in some manner and/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 and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

The goods are virtually identical in nature.  Both the applicant and registrant offer various soaps, creams, lotions, lip balm and cosmetic preparations. 

 

The marks are highly similar and the goods are highly related.  The goods of the parties will travel the same trade channels and will be directed to the same potential purchaser.  Accordingly, the mark is refused under Section 2(d) of the Act. 

 

The applicant should note the second refusal.

 

SPECIMEN DOES NOT SHOW USE FOR THE CLASS 35 SERVICES

The specimen for Class 3 is acceptable and will not be addressed here.  However, the specimen for the Class 35 services is not acceptable because it does not show the applied-for mark in use in commerce.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

The applicant indicates that the specimen consists of a “scanned website banner.”  However, it is not acceptable as evidence of actual service mark use because it appears to be merely the mark in stacked font and does not appear to be used as a ”website banner.”  The use does not show the mark used on a website or in connection with other online retail services.   Thus, it fails to show proper use of the applied-for mark in the sale or advertising of the services.  

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of services specified in the application; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Applicant may respond to the stated specimen refusal by submitting a verified substitute specimen or amending the application to an intent to use filing basis under Trademark Act Section 1(b) by following the suggested directions below for responding either online or by mail. 

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a substitute specimen as follows:  (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen,” (2) attach a jpg or pdf file of the substitute specimen, and (3) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”  However, if applicant is responding by amending the application to a Section 1(b) filing basis, applicant should do the following:  (1) answer “yes” to the TEAS response form wizard questions to “change filing basis” and for a “signed declaration,” respectively; (2) uncheck the box for “Filing Basis Section 1(a);” and (3) check the box for “Filing Basis Section 1(b).”  Please note that these steps appear on different pages of the TEAS response form. 

 

Whether submitting a substitute specimen or amending the filing basis to Section 1(b), applicant must also personally sign or personally enter his/her electronic signature and date after the declaration at the end of the TEAS response form, and print or type the name of the signatory immediately below or adjacent to his/her signature or identify it elsewhere in the filing.  See 37 C.F.R. §§2.34(a)(2), 2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, or changing the filing basis, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified substitute specimen by (1) checking the first statement below and personally signing, dating, and printing or typing the name of the signatory in the declaration appearing below the statement; and (2) submitting a substitute specimen showing the applied-for mark in use in commerce.  See 37 C.F.R. §§2.20, 2.59(a), 2.193(a)(1), (d), (e)(1); TMEP §§611.01(b), 804.01(b), 904.05.  If applicant is responding by amending the application to a Section 1(b) filing basis, applicant may check the second statement below, and personally sign, date, and enter the printed or typed name of the signatory in the declaration appearing below the statement.  See 37 C.F.R. §§2.20, 2.34(a)(2), 2.193(a)(1), (d), (e)(1); TMEP §§611.01(b), 804.01(b), 806.03(c).

 

q        The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

q        Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

The following persons are properly authorized to sign a verification or declaration on behalf of an applicant:

 

(1)       A person with legal authority to bind the applicant (e.g., a corporate officer or general partner);

 

(2)       A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

 

(3)       An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

 

37 C.F.R. §§2.33(a), 2.193(e)(1); TMEP §§611.03(a), 804.04; see 37 C.F.R. §§11.1, 11.14.

 

 

NOTE:   If the applicant responds via a paper response, he must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04

 

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.  The applicant must also address the following:

 

IDENTIFICATION

The applicant’s mark includes the term “ORGANICS.”  See TMEP §1402.01.  Because potential consumers are likely to consider the “ORGANIC” nature of goods as part of a purchasing decision, the applicant must specify whether the featured goods are “ORGANIC.”  If the goods are not “ORGANIC” in nature, the mark may be refused as misdescriptive.  The Applicant may adopt the following identifications, if accurate: 

 

“Aromatic body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Bath soaps in liquid, solid or gel form; Beauty creams for body care; Beauty gels; Beauty lotions; Beauty masks; Beauty serums; Body lotions; Body oils; Body wash; Cleansing creams; Cosmetic creams for skin care; Cosmetic masks; Cosmetic nourishing creams; Cosmetic oils; Cosmetic preparations for body care; Cosmetic preparations for skin care; Cosmetic preparations for skin renewal; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Essential oils for personal use; Face and body creams; Face and body lotions; Face creams for cosmetic use; Facial beauty masks; Foam cleansers for personal use; Fragranced body care preparations, namely, washes and lotions; Fragranced face care preparations, namely, washes, toners, moisturizers and masks; Lotions for face and body care; Moisturizing preparations for the skin; Non-medicated cleansers for personal use, namely, face and body washes and scrubs; Non-medicated facial and eye serum containing antioxidants; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin toners; Non-medicated stimulating lotions for the skin; Skin care products, namely, non-medicated skin serum; Skin clarifiers; Skin cleansing lotion; Skin creams; Skin masks; Skin moisturizer masks; Skin toners; all the foregoing goods being organic” in Class 3; and

       

“On-line retail store services featuring organic face and body skincare products” in Class 35.

 

Although identifications of goods or services may be amended to clarify or limit the goods or services, adding to or broadening the scope of the goods or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods or services 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.  See TMEP §1402.04.

 

LIVING INDIVIDUAL

The applied-for mark contains the name “MICHAEL TODD” and appears to identify a particular living individual; however, the application does not include this named party’s written consent to registration of the name as a trademark/service mark.  Written consent is required for registration of a mark containing a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  Therefore, applicant must clarify whether this name/signature identifies a particular living individual and, if so, provide a written consent from this individual, as explained further below.  37 C.F.R. §2.61(b); TMEP §§813, 1206.04(a).   

 

If the name or signature in the mark does not identify a particular living individual, then applicant must submit a statement that the name “MICHAEL TODD” does not identify a living individual.  TMEP §§813.01(b), 1206.05; see 37 C.F.R. §2.61(b).

 

If the name or signature in the mark does identify a particular living individual, then applicant must submit the following: 

 

(1)  A statement that the name “MICHAEL TODD” identifies a living individual whose consent is of record.  If the name represents that of a pseudonym, stage name, or nickname, applicant must include a statement that “MICHAEL TODD” identifies the actual name of a living individual whose consent is of record; and

 

(2)  A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname, or signature as a trademark and/or service mark with the USPTO (e.g., “I consent to the use and registration by the company, Designer Michael Todd, of my name “MICHAEL TODD” as a trademark and/or service mark with the USPTO”).

 

TMEP §§813, 813.01(a), 1206.04(a); see 37 C.F.R. §2.61(b).

 

Failure to respond to this inquiry is a sufficient basis for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

RESPONSE GUIDELINES

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.

 

 

 

 

Paula M. Mahoney

Trademark Attorney

Law Office 117

paula.mahoney@usto.gov

571-272-9191Paula M. Mahoney

Trademark Attorney

Law Office 117

paula.mahoney@usto.gov

571-272-9191

 

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 TRADEMARK APPLICATION

Your trademark application (Serial No. 85609019) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 8/25/2012 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

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

 

2. Respond within 6 months, calculated from 8/25/2012 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

USPTO

Paula M. Mahoney

Trademark Attorney

Law Office 117

paula.mahoney@usto.gov

571-272-9191

WARNING

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

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, please use the Trademark Electronic Application System Response to Office Action form.