Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85609019 MICHAEL TODD TRUE ORGANICS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85609019) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

I.                   Section 2(d) Refusal.

            The mark in Reg. No. 3461969 is BRIGIT TRUE ORGANICS and the goods listed in the registration comprise 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.

            The Applicant’s mark is MICHAEL TODD TRUE ORGANICS and the goods listed in the application comprise 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 and online retail store services featuring face and body skincare products.

A.                            The Marks Must be Considered in their Entireties.

            In comparing Applicant’s and Registrants’ marks, the marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. See e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 U.S.P.Q. 272, 273 (C.C.P.A. 1974) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”);  Dreyfus Fund, Inc. v. Royal Bank of Canada, 525 F. Supp. 1108, 213 U.S.P.Q. 872  (S.D.N.Y. 1981) (quoting treatise);  In re National Data Corp., 753 F.2d 1056,  224 U.S.P.Q. 749, 751 (Fed. Cir. 1985) (“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.”);  General Mills, Inc. v. Kellogg Co., 824 F.2d 622,  3 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987) (“[I]n analyzing the similarities of sight, sound and meaning between two marks, a court must look to the overall impression created by the marks and not merely compare individual features.”); Duluth News-Tribune v. Mesabi Publ. Co., 84 F.3d 1093, 38 U.S.P.Q.2d 1937 (8th Cir. 1996) (“Rather than consider the similarities between the component parts of the marks, we must evaluate the impression that each mark in its entirety is likely to have on a purchaser exercising the attention usually given by purchasers of such products.”). 

            A significantly different display of the same term or an addition of a distinctive element (i.e. term or design) can avoid a likelihood of confusion.  First Savings Ban, F.S.B. v. First Bank Systems, Inc., 40 U.S.P.Q.2d 1865 (10^th Cir. 1996) (no confusion between FIRST BANK and FIRST BANK SYSTEM (and design)).  The use of a MICHAEL TODD as part of a mark minimizes any likelihood of confusion.  Harlem Wizards, 952 F. Supp. At 1096 (citing McCarthy at §23:15[5]).  See Also In re NBA Properties, Inc., 2000 TTAB LEXIS 863 (TTAB 2000) (when considered in their entireties, the marks differ in appearance and create distinctly different commercial impressions; applicant’s mark is a composite consisting of a word and a design, both of which must be considered in determining the overall commercial impression the mark conveys).

            Applicant respectfully submits that the Examiner erred in failing to give due weight to the TRUE ORGANICS portion in Applicant's Mark. "Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight." In re Hearst, 982 F.2d 493, 494 (Fed.Cir. 1992). In Hearst, the Applicant sought to register VARGA GIRL for calendars. The Trademark Trial and Appeal Board refused registration in light of the prior registration VARGAS, registered for posters, calendars, greeting cards" and related goods. On Appeal, the Federal Circuit reversed the Board's refusal.

            The appearance, sound, sight, and commercial impression of VARGA GIRL derive significant contribution from the component "girl." By stressing the portion "varga" and diminishing the portion "girl", the Board inappropriately changed the mark. Although the weight given the respective words is not entirely free of subjectivity, we believe that the Board erred in its diminution of the contribution of the word "girl". When GIRL is given fair weight, along with VARGA, confusion with VARGAS becomes less likely.

            Similarly, Applicant's mark must be viewed in its entirety. Applicant respectfully submits that the Examiner has erred by stressing the portion TRUE ORGANICS and diminishing the portions BRIGIT and MICHAEL TODD. Applicant submits that the Examiner has effectively removed these significant portions from the marks. When all portions of Applicant's mark are given proper consideration, Applicant contends that the two marks are sufficiently distinguishable in sight, sound and meaning to create distinguishable overall commercial impressions.

            In this case, Applicant’s MICHAEL TODD TRUE ORGANICS mark, when viewed in its entirety, is distinct from Registrant’s relatively unique BRIGIT TRUE ORGANICS mark.

B.                             The Field is Extremely Crowded.

            The importance of the unique commercial impression created by the MICHAEL TODD TRUE ORGANICS and BRIGIT TRUE ORGANICS marks is magnified in light of the large number of cosmetic related marks containing the term TRUE combined with a descriptive term.  See Exhibit A, attached.  As discussed in DuPont, this relatively large number of similar marks indicates that the scope of protection provided to any one mark is relatively narrow.  Based on this crowded field, Applicant believes that consumers are conditioned to distinguishing between different “TRUE” marks as they relate to cosmetics–a fact that reduces the potential for confusion in this case.  

            Based on the above, Applicant respectfully requests that the Examiner reconsider the 2(d) refusal, giving due weight to the principles outlined in TMEP § 1207.01(c)(ii) and considering the marks in their entireties.  Moreover, Applicant respectfully requests that the Examiner approve the mark for publication.

EVIDENCE
Evidence in the nature of regsitrations that combine the term TRUE and a descriptive element has been attached.
Original PDF file:
evi_1747960152-184115162_._MICHAEL_TODD_Exhibit_A.pdf
Converted PDF file(s) ( 29 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/15/2011 and first used in commerce at least as early as 12/15/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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 organicClass 003 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; all the foregoing goods being organic
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/15/2011 and first used in commerce at least as early as 12/15/2011 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for On-line retail store services featuring face and body skincare products
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/15/2011 and first used in commerce at least as early as 12/15/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: On-line retail store services featuring face and body skincare products; On-line retail store services featuring organic face and body skincare productsClass 035 for On-line retail store services featuring organic face and body skincare products
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/15/2011 and first used in commerce at least as early as 12/15/2011 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of website page used to promote services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Christopher J. Day of Law Office of Christopher Day, having an address of
9977 North 90th Street, Suite 155 Scottsdale, Arizona 85258
United States
chris@daylawfirm.com
602-258-4440
602-258-4441


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LEWIS M. HENDLER
DESIGNER MICHAEL TODD, LLC
1966 SE MANDRAKE CIR
PORT ST LUCIE
Florida (FL)
US
34952-6946

Proposed:
Christopher J. Day of Law Office of Christopher Day, having an address of
9977 North 90th Street, Suite 155 Scottsdale, Arizona 85258
United States
chris@daylawfirm.com
602-258-4440
602-258-4441



ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1747960152-184115162_._MICHAEL_TODD_Declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Lewis Hendler
Signatory's Position: Chairman
Signatory's Phone Number: n/a


Response Signature
Signature: /Christopher J. Day/     Date: 10/08/2012
Signatory's Name: Christopher J. Day
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 602-258-4440

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Christopher J. Day
   Law Office of Christopher Day
   9977 North 90th Street, Suite 155
   Scottsdale, Arizona 85258
        
Serial Number: 85609019
Internet Transmission Date: Mon Oct 08 14:17:47 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2012100814174760
9328-85609019-490d28f1e981211363ccc29618
e9ca3f60-N/A-N/A-20121008141706577643