| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86774121 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86774121/large |
| LITERAL ELEMENT | ALLURE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Applicant respectfully requests reconsideration based on the following remarks. INTRODUCTION Applicant’s original application seeks to register its mark, ALLURE, for goods in Classes 03, 05, and 10, including:
Class 05 Class 10 LIKELIHOOD OF CONFUSION The Office Action does not raise any issues to Applicant’s registration of ALLURE for “tooth whitening preparations” in Class 03. The Office Action, however, refuses registration for the goods in Classes 05 and 10 under Trademark Action Section 2(d), 15 U.S.C. Section 1052(d), stating that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1,463,390 for ALLURE for “orthodontic appliances, namely transparent ceramic brackets”, in Class 10, as to be likely to cause confusion, to cause mistake, or to deceive. Applicant has carefully amended its identification of goods in support of registration. In particular, Applicant has canceled all of the goods in Class 10 and most of the goods in Class 05, such that Applicant now seeks only to register the mark, ALLURE, for the following reduced list of goods: Class 03 Class 05 Applicant respectfully submits that there is no likelihood of confusion between Applicant’s mark and the cited mark relative to these goods. Applicant respectfully asserts that confusion is not likely because the registered mark is weak, because there are differences between the goods and markets for which the marks are respectively used, and because the purchasers of applicant’s goods are sophisticated physicians. Strength of the mark – Co-existence Applicant respectfully submits that the cited registration for ALLURE should not give the registrant the exclusive right to register the term for all goods “used on teeth.” In fact, U.S. Registration No. 1,463,390, which covers ALLURE for “orthodontic appliances, namely transparent ceramic brackets” in Class 10, currently co-exists with U.S. Registration No. 4,713,935 on ALLURE DENTAL (with “dental” disclaimed) for “dental services, namely performing restorative and cosmetic procedures”. (copy of TESS records included as evidence). Moreover, looking back in time, U.S. Registration No. 1,463,390 for ALLURE previously co-existed with numerous other ALLURE marks that were once registered or allowed by the USPTO:
Applicant has reviewed the evidence that orthodontia apparatus and dental composites or etchants sometimes originate from the same source. Applicant respectfully notes, however, that the evidentiary registrations explicitly include dozens of goods, whereas the cited registration for ALLURE is merely for a single, very specific orthodontic device (a “transparent ceramic bracket”) and the cited registration has happily co-existed with other ALLURE-brand products connected with teeth. Clearly, the ALLURE registration’s co-existence with numerous other ALLURE marks shows that the term ALLURE is somewhat weak, and is not associated exclusively with any one company. As such, Applicant’s ALLURE brand “dental composites” and “etchants” should likewise be able to co-exist and be distinguishable from the cited registration which is registered only for “transparent ceramic brackets.”
Different goods. A comparison of the goods offered under the respective marks is also required. In In re E. I. Du Pont De Nemours & Co., 177 USPQ 563 (CCPA 1973), the Court stated, that the “similarity and nature of goods or services as described in application or registration or in connection with which prior mark is in use must be considered.” Applicant’s goods are “dental composite materials” and “etchants for dental applications” in Class 05. Registrant’s goods, on the other hand, are “orthodontic appliances, namely transparent ceramic brackets” in Class 10. These products are not interchangeable and are used for specific purposes. Moreover, they are purchased and used by two different types of medical professionals – orthodontists for one and dentists for the other. As such, there is no likelihood that the purchasers of registrant’s ALLURE-brand “orthodontic appliances” would be confused in any way with Applicant’s ALLURE-brand “composite materials” or “etchants.” In addition, the prior and existing co-existence of very similar marks incorporating the term ALLURE for various products cited above is highly relevant to show that the medical professionals would not believe that the source of ALLURE “orthodontic appliances, namely transparent ceramic brackets” would be the same as the source of the ALLURE “composite materials” or “etchants.”
High Degree of Consumer Care/Sophisticated Purchasers Conditions under which the goods are encountered in the marketplace, and under which purchasing decisions are made, must be considered as well when evaluating the likelihood that a mark sought to be registered in an application might be confused with a registered mark. T.M.E.P § 1207. If the decision is made by a sophisticated purchaser, it may be sufficient to negate a likelihood of confusion even between marks of great similarity. Litton Sys., Inc. v. Whirlpool Corp., 221 U.S.P.Q. 97, 97, 112 (Fed. Cir. 1984) . The goods offered under the Applicant’s Mark and the Cited Mark are not impulse purchases made by unsophisticated purchasers. These goods are given careful study and a thorough evaluation by highly educated physicians, by dentists on the one hand by orthodontists on the other. Given the highly technical nature of the Applicant’s goods, these purchases are not likely to be made on impulse. The selection of these goods require careful study and a thorough evaluation of the product providers. The relevant consumers in the present case, dentists on one hand and orthodontists on the other, will only make a purchase after careful examination of the respective providers and they will inherently know the sources are different. They are sophisticated consumers with specific needs. These medical professionals tend to be careful, discriminating buyers who study the source, quality, and characteristics of Applicant’s and the cited Registrant’s dissimilar goods. As a result, it is not likely or probable that these sophisticated purchases would confuse Applicant’s goods with the cited prior registrant’s goods. See Electronic Design and Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718-19 (Fed. Cir. 1992) (holding that goods purchased by persons highly knowledgeable about the goods substantially lessons likelihood of confusion); Astra Pharmaceutical Prods., Inc. v. Beckman Instr., Inc. , U.S.P.Q. 786, 790 (1st Cir. 1983) (“There is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”). The purchasers of Applicant’s goods and the cited Registrant’s goods are highly knowledgeable with respect to general dental health (dentists) and the correction of occlusion and the straightness of teeth (orthodontists). Accordingly, the high degree of care likely to be exercised by purchasers of the relevant goods, based on the very nature of the goods, does not support a finding of likelihood of confusion. See, In re RAM Oil, Ltd., LLP, Serial Nos. 77/280977 and 77/ 280981 p.12 (T.T.A.B. 2009) (non-precedential) ( “safely assuming” that potential purchasers of goods and services which “by their very nature are unusual, complex and expensive,” “are knowledgeable and careful consumers who exercise a high degree of care”).
Conclusion Applicant submits that the ALLURE mark is weak as shown by current and prior co-existence. The parties’ goods are different. The purchasers are different and the respective purchasers are sophisticated. As evidenced herein, therefore, it is highly unlikely that potential purchasers of Applicant’s goods or Registrant’s goods would believe that the respective goods originated from the same source. Applicant maintains that it is highly unlikely that the sophisticated purchasers of Applicant’s or Registrant’s goods would be confused as to the source of those goods.
SUMMARY Applicant believes it has responded satisfactorily to the Office Action, and has demonstrated that no likelihood of confusion exists between the goods associated with Applicant’s mark and the cited mark. Applicant respectfully requests, therefore, that the Examining Attorney reconsider this application and allow it to proceed to publication. Respectfully submitted, /joseph c andras/ |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_9818980124-20160721201658907294_._ord_-_ALLURE_CROWN_for_dental_proshetics_-_Was_Co-Registered.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_9818980124-20160721201658907294_.__ALLURE_DENTAL_for_dental_services_-_Currently_Co-Registered.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_9818980124-20160721201658907294_.__-_ALLURE_for_Dental_Bleaching_Kits_-_Allowed__but_abandoned.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_9818980124-20160721201658907294_._d_-_ALLURE_for_Dental_Examination_Chairs_-_Was_Co-Registered.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0008.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0009.JPG | |
| ORIGINAL PDF FILE | evi_9818980124-20160721201658907294_._LE_and_Design_for_tooth-whitening_system_-_Was_Co-Registered.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0010.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0011.JPG | |
| ORIGINAL PDF FILE | evi_9818980124-20160721201658907294_._-_ALLURESMILE_for_tooth-whitening_system_-_Was_Co-Registered.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0012.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\741\86774121\xml4\ROA0013.JPG | |
| DESCRIPTION OF EVIDENCE FILE | PDF copies of TESS records |
| GOODS AND/OR SERVICES SECTION (003)(no change) | |
| GOODS AND/OR SERVICES SECTION (005)(current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| adhesives for dental bonding; composite materials for dental and dental technical purposes; dental composite materials; phosphoric acid gel in dispenser syringes for use in dental applications; etchant for use in dental applications; pre-loaded syringes containing resin-based dental restorative composites in various shades, and a resin-based dental restorative composite | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (005)(proposed) | |
| INTERNATIONAL CLASS | 005 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| dental composite materials; etchant for use in dental applications | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (010)(class deleted) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /JCA/ |
| SIGNATORY'S NAME | Joseph C. Andras |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| SIGNATORY'S PHONE NUMBER | 949-223-9600 |
| DATE SIGNED | 07/21/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jul 21 20:32:26 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0160721203226176417-86774 121-550d2529ae274261c435c 59e4644b33db729d477a656b9 5a28a390d7b83fc2b1b6-N/A- N/A-20160721201658907294 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Applicant respectfully requests reconsideration based on the following remarks.
INTRODUCTION
Applicant’s original application seeks to register its mark, ALLURE, for goods in Classes 03, 05, and 10, including:
Class 03
* tooth whitening preparations
Class 05
* adhesives for dental bonding;
* composite materials for dental and dental technical purposes;
* dental composite materials;
* phosphoric acid gel in dispenser syringes for use in dental applications;
* etchant for use in dental applications;
* pre-loaded syringes containing resin-based dental restorative composites in various shades, and
* a resin-based dental restorative composite
Class 10
* dental products, namely, applicators and brushes used to apply dental materials;
* intra-oral dental light system;
* polymerization apparatus for dental purposes
LIKELIHOOD OF CONFUSION
The Office Action does not raise any issues to Applicant’s registration of ALLURE for “tooth whitening preparations” in Class 03. The Office Action, however, refuses registration for the goods in Classes 05 and 10 under Trademark Action Section 2(d), 15 U.S.C. Section 1052(d), stating that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1,463,390 for ALLURE for “orthodontic appliances, namely transparent ceramic brackets”, in Class 10, as to be likely to cause confusion, to cause mistake, or to deceive.
Applicant has carefully amended its identification of goods in support of registration. In particular, Applicant has canceled all of the goods in Class 10 and most of the goods in Class 05, such that Applicant now seeks only to register the mark, ALLURE, for the following reduced list of goods:
Class 03
* tooth whitening preparations
Class 05
* dental composite materials;
* etchant for use in dental applications;
Applicant respectfully submits that there is no likelihood of confusion between Applicant’s mark and the cited mark relative to these goods. Applicant respectfully asserts that confusion is not likely because the registered mark is weak, because there are differences between the goods and markets for which the marks are respectively used, and because the purchasers of applicant’s goods are sophisticated physicians.
Strength of the mark – Co-existence
Applicant respectfully submits that the cited registration for ALLURE should not give the registrant the exclusive right to register the term for all goods “used on teeth.”
In fact, U.S. Registration No. 1,463,390, which covers ALLURE for “orthodontic appliances, namely transparent ceramic brackets” in Class 10, currently co-exists with U.S. Registration No. 4,713,935 on ALLURE DENTAL (with “dental” disclaimed) for “dental services, namely performing restorative and cosmetic procedures”. (copy of TESS records included as evidence).
Moreover, looking back in time, U.S. Registration No. 1,463,390 for ALLURE previously co-existed with numerous other ALLURE marks that were once registered or allowed by the USPTO:
Applicant has reviewed the evidence that orthodontia apparatus and dental composites or etchants sometimes originate from the same source. Applicant respectfully notes, however, that the evidentiary registrations explicitly include dozens of goods, whereas the cited registration for ALLURE is merely for a single, very specific orthodontic device (a “transparent ceramic bracket”) and the cited registration has happily co-existed with other ALLURE-brand products connected with teeth.
Clearly, the ALLURE registration’s co-existence with numerous other ALLURE marks shows that the term ALLURE is somewhat weak, and is not associated exclusively with any one company. As such, Applicant’s ALLURE brand “dental composites” and “etchants” should likewise be able to co-exist and be distinguishable from the cited registration which is registered only for “transparent ceramic brackets.”
Different goods.
A comparison of the goods offered under the respective marks is also required. In In re E. I. Du Pont De Nemours & Co., 177 USPQ 563 (CCPA 1973), the Court stated, that the “similarity and nature of goods or services as described in application or registration or in connection with which prior mark is in use must be considered.”
Applicant’s goods are “dental composite materials” and “etchants for dental applications” in Class 05. Registrant’s goods, on the other hand, are “orthodontic appliances, namely transparent ceramic brackets” in Class 10. These products are not interchangeable and are used for specific purposes. Moreover, they are purchased and used by two different types of medical professionals – orthodontists for one and dentists for the other. As such, there is no likelihood that the purchasers of registrant’s ALLURE-brand “orthodontic appliances” would be confused in any way with Applicant’s ALLURE-brand “composite materials” or “etchants.”
In addition, the prior and existing co-existence of very similar marks incorporating the term ALLURE for various products cited above is highly relevant to show that the medical professionals would not believe that the source of ALLURE “orthodontic appliances, namely transparent ceramic brackets” would be the same as the source of the ALLURE “composite materials” or “etchants.”
High Degree of Consumer Care/Sophisticated Purchasers
Conditions under which the goods are encountered in the marketplace, and under which purchasing decisions are made, must be considered as well when evaluating the likelihood that a mark sought to be registered in an application might be confused with a registered mark. T.M.E.P § 1207. If the decision is made by a sophisticated purchaser, it may be sufficient to negate a likelihood of confusion even between marks of great similarity. Litton Sys., Inc. v. Whirlpool Corp., 221 U.S.P.Q. 97, 97, 112 (Fed. Cir. 1984) .
The goods offered under the Applicant’s Mark and the Cited Mark are not impulse purchases made by unsophisticated purchasers. These goods are given careful study and a thorough evaluation by highly educated physicians, by dentists on the one hand by orthodontists on the other.
Given the highly technical nature of the Applicant’s goods, these purchases are not likely to be made on impulse. The selection of these goods require careful study and a thorough evaluation of the product providers. The relevant consumers in the present case, dentists on one hand and orthodontists on the other, will only make a purchase after careful examination of the respective providers and they will inherently know the sources are different. They are sophisticated consumers with specific needs. These medical professionals tend to be careful, discriminating buyers who study the source, quality, and characteristics of Applicant’s and the cited Registrant’s dissimilar goods.
As a result, it is not likely or probable that these sophisticated purchases would confuse Applicant’s goods with the cited prior registrant’s goods. See Electronic Design and Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718-19 (Fed. Cir. 1992) (holding that goods purchased by persons highly knowledgeable about the goods substantially lessons likelihood of confusion); Astra Pharmaceutical Prods., Inc. v. Beckman Instr., Inc. , U.S.P.Q. 786, 790 (1st Cir. 1983) (“There is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”).
The purchasers of Applicant’s goods and the cited Registrant’s goods are highly knowledgeable with respect to general dental health (dentists) and the correction of occlusion and the straightness of teeth (orthodontists). Accordingly, the high degree of care likely to be exercised by purchasers of the relevant goods, based on the very nature of the goods, does not support a finding of likelihood of confusion. See, In re RAM Oil, Ltd., LLP, Serial Nos. 77/280977 and 77/ 280981 p.12 (T.T.A.B. 2009) (non-precedential) ( “safely assuming” that potential purchasers of goods and services which “by their very nature are unusual, complex and expensive,” “are knowledgeable and careful consumers who exercise a high degree of care”).
Conclusion
Applicant submits that the ALLURE mark is weak as shown by current and prior co-existence. The parties’ goods are different. The purchasers are different and the respective purchasers are sophisticated.
As evidenced herein, therefore, it is highly unlikely that potential purchasers of Applicant’s goods or Registrant’s goods would believe that the respective goods originated from the same source. Applicant maintains that it is highly unlikely that the sophisticated purchasers of Applicant’s or Registrant’s goods would be confused as to the source of those goods.
SUMMARY
Applicant believes it has responded satisfactorily to the Office Action, and has demonstrated that no likelihood of confusion exists between the goods associated with Applicant’s mark and the cited mark.
Applicant respectfully requests, therefore, that the Examining Attorney reconsider this application and allow it to proceed to publication.
Respectfully submitted,
/joseph c andras/
Joseph C. Andras
