| 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 | 86955235 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86955235/mark.png |
| LITERAL ELEMENT | VANISH |
| 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's Response to the Non-Final Office Action Dated July 18, 2016 A Non-Final Office Action has issued in this case regarding the issue of a section 2(d) refusal. Applicant addresses this issue below. Applicant’s mark is VANISH claiming “cosmetics; fragrances.” U.S. Trademark Registration Number 4,966,038 (“the ‘038 Registration”) for the mark VANISH has been cited against Applicant under section 2(d). The cited registration covers “indoor and outdoor non-medicated skin tanning preparations.” The section 2(d) refusal has been made based on the allegations of similarity of the marks, similarity of the goods and similarity of the respective channels of trade.
I. The Respective Goods and Channels of Trade Are Not So Similar as to Cause a Likelihood of Confusion
Applicant has amended its listing of goods to more specifically cover “Cosmetic foundation, highlighters, concealers and primers.” Applicant respectfully asserts that the goods as amended are not so related with the goods of the ‘038 Registration as to cause a likelihood of confusion between the marks and that such amendment obviates the refusal under section 2(d). The owner of the ‘038 Registration’s goods are skin tanning preparations for providing a user with a synthetic or “fake” tan wherein such goods would be sold with other tanning products (e.g., at tanning salons). In contrast, Applicant’s goods are specifically identified cosmetics that would be sold at a cosmetics counter at a department store or in the same channel as other similar cosmetics brands. For this reason, it is unlikely that the goods of the ‘038 Registration would be marketed in such a way that they would be encountered at the same locations by persons seeking to purchase Applicant’s cosmetics. “[I]f the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP §1207.01(a)(i). Even if there is a possibility of confusion, the possibility of confusion is not the standard—a likelihood of confusion is the standard. See In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added). Here, because of the differences in the goods under each mark and the differences in the channels of trade, there is no such likelihood as is required.
II. VANISH COLOR CORRECTOR
U.S. Trademark Registration Number 3,534,605 (“the ‘605 Registration”) for the mark VANISH COLOR CORRECTOR is a live, incontestable registration wherein the phrase “Color Corrector” has been disclaimed, leaving the term VANISH as the prominent feature of the mark. This registration covers “Hair care products, namely, hair color remover, hair dye remover, and hair color and dye corrector” in class 3—the same class as the ‘038 Registration. Such product involves the color of the hair whereas the ‘038 Registration involves the color of the skin. The ‘038 Registration and the ‘605 Registration coexist on the Principal Register despite the fact that they are in the same class and both include “VANISH” as the prominent feature of the marks. In the same manner, Applicant should be allowed to register its mark at least because of the differences between Applicant’s goods and the goods listed in the ‘038 Registration mentioned in Section I above.
III. Coexistence of the COMPLEXION Marks
The mark COMPLEXION (Reg. No. 4,544,675, hereinafter “the ‘675 Registration”) is currently registered covering “Indoor and outdoor non-medicated skin tanning preparations” in class 3—precisely the same goods as those of the ‘038 Registration for VANISH. In fact, the ‘675 Registration is owned by the same company that owns the ‘038 Registration—Australian Gold, LLC. The mark FRESH COMPLEXION (Reg. No. 1,779,953, hereinafter “the ‘953 Registration”) is currently registered on the Principal Register to a different company wherein the ‘953 Registration covers “cosmetics, namely, foundation”—the same goods under Applicant’s application. So, there are two marks on the Principal Register that include the same prominent term (i.e., COMPLEXION) and that cover the same goods as the owner of the ‘038 Registration and Applicant, respectively. More specifically, there is precedent for one mark to cover tanning preparations while another very similar mark covers cosmetic foundation and for such marks to coexist on the Principal Register. In the same way that the ‘675 Registration and the ‘953 Registration coexist, Applicant should be allowed to register its mark and coexist with the owner of the ‘038 Registration at least because of the differences between Applicant’s goods and the goods listed in the ‘038 Registration mentioned in Section I above.
IV. Coexistence of the BELLEZZA Marks
The mark BELLEZZA (Reg. No. 3,842,038, hereinafter “the BELLEZZA Registration”) is currently registered covering “Indoor skin tanning preparations” in class 3—precisely the same goods as those of the ‘038 Registration for VANISH. The mark MIA BELLEZZA (Reg. No. 4,192,363, hereinafter “the ‘363 Registration”) is currently registered on the Principal Register to a different company wherein the ‘363 Registration covers, inter alia, “cosmetics”—the same goods under Applicant’s application. So, here again as a second example, there are two marks on the Principal Register that include the same prominent term (i.e., BELLEZZA) and that cover the same goods as the owner of the ‘038 Registration and Applicant, respectively. As yet another example, there is precedent for one mark to cover tanning preparations while another very similar mark covers cosmetics and for such marks to coexist on the Principal Register. In the same way that the BELLEZZA Registration and the ‘363 Registration coexist, Applicant should be allowed to register its mark and coexist with the owner of the ‘038 Registration at least because of the differences between Applicant’s goods and the goods listed in the ‘038 Registration mentioned in Section I above.
V. Conclusion Applicant asserts that on information and belief, it has fully addressed all of the issues raised by the Examining Attorney in the recent Office Action. In light thereof and based on the traversal set forth above, Applicant respectfully requests that this application be moved forward to publication for Applicant’s goods as amended. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | Cosmetics; Fragrances |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 003 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Cosmetic foundation, highlighters, concealers and primers |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /michaelerobinson/ |
| SIGNATORY'S NAME | Michael E. Robinson |
| SIGNATORY'S POSITION | Attorney of record, Tennessee bar member |
| SIGNATORY'S PHONE NUMBER | 865-978-6480 |
| DATE SIGNED | 01/17/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jan 17 12:05:28 EST 2017 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XX-201 70117120528777963-8695523 5-580c195dd184fbb3e4bd49e da90e7af6498f75df5540af62 40753982154ddcdd2a-N/A-N/ A-20170117114404010238 |
| 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's Response to the Non-Final Office Action Dated July 18, 2016
A Non-Final Office Action has issued in this case regarding the issue of a section 2(d) refusal. Applicant addresses this issue below.
Applicant’s mark is VANISH claiming “cosmetics; fragrances.” U.S. Trademark Registration Number 4,966,038 (“the ‘038 Registration”) for the mark VANISH has been cited against Applicant under section 2(d). The cited registration covers “indoor and outdoor non-medicated skin tanning preparations.” The section 2(d) refusal has been made based on the allegations of similarity of the marks, similarity of the goods and similarity of the respective channels of trade.
I. The Respective Goods and Channels of Trade Are Not So Similar as to Cause a Likelihood of Confusion
Applicant has amended its listing of goods to more specifically cover “Cosmetic foundation, highlighters, concealers and primers.” Applicant respectfully asserts that the goods as amended are not so related with the goods of the ‘038 Registration as to cause a likelihood of confusion between the marks and that such amendment obviates the refusal under section 2(d). The owner of the ‘038 Registration’s goods are skin tanning preparations for providing a user with a synthetic or “fake” tan wherein such goods would be sold with other tanning products (e.g., at tanning salons). In contrast, Applicant’s goods are specifically identified cosmetics that would be sold at a cosmetics counter at a department store or in the same channel as other similar cosmetics brands. For this reason, it is unlikely that the goods of the ‘038 Registration would be marketed in such a way that they would be encountered at the same locations by persons seeking to purchase Applicant’s cosmetics. “[I]f the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP §1207.01(a)(i). Even if there is a possibility of confusion, the possibility of confusion is not the standard—a likelihood of confusion is the standard. See In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added). Here, because of the differences in the goods under each mark and the differences in the channels of trade, there is no such likelihood as is required.
II. VANISH COLOR CORRECTOR
U.S. Trademark Registration Number 3,534,605 (“the ‘605 Registration”) for the mark VANISH COLOR CORRECTOR is a live, incontestable registration wherein the phrase “Color Corrector” has been disclaimed, leaving the term VANISH as the prominent feature of the mark. This registration covers “Hair care products, namely, hair color remover, hair dye remover, and hair color and dye corrector” in class 3—the same class as the ‘038 Registration. Such product involves the color of the hair whereas the ‘038 Registration involves the color of the skin. The ‘038 Registration and the ‘605 Registration coexist on the Principal Register despite the fact that they are in the same class and both include “VANISH” as the prominent feature of the marks. In the same manner, Applicant should be allowed to register its mark at least because of the differences between Applicant’s goods and the goods listed in the ‘038 Registration mentioned in Section I above.
III. Coexistence of the COMPLEXION Marks
The mark COMPLEXION (Reg. No. 4,544,675, hereinafter “the ‘675 Registration”) is currently registered covering “Indoor and outdoor non-medicated skin tanning preparations” in class 3—precisely the same goods as those of the ‘038 Registration for VANISH. In fact, the ‘675 Registration is owned by the same company that owns the ‘038 Registration—Australian Gold, LLC. The mark FRESH COMPLEXION (Reg. No. 1,779,953, hereinafter “the ‘953 Registration”) is currently registered on the Principal Register to a different company wherein the ‘953 Registration covers “cosmetics, namely, foundation”—the same goods under Applicant’s application. So, there are two marks on the Principal Register that include the same prominent term (i.e., COMPLEXION) and that cover the same goods as the owner of the ‘038 Registration and Applicant, respectively. More specifically, there is precedent for one mark to cover tanning preparations while another very similar mark covers cosmetic foundation and for such marks to coexist on the Principal Register. In the same way that the ‘675 Registration and the ‘953 Registration coexist, Applicant should be allowed to register its mark and coexist with the owner of the ‘038 Registration at least because of the differences between Applicant’s goods and the goods listed in the ‘038 Registration mentioned in Section I above.
IV. Coexistence of the BELLEZZA Marks
The mark BELLEZZA (Reg. No. 3,842,038, hereinafter “the BELLEZZA Registration”) is currently registered covering “Indoor skin tanning preparations” in class 3—precisely the same goods as those of the ‘038 Registration for VANISH. The mark MIA BELLEZZA (Reg. No. 4,192,363, hereinafter “the ‘363 Registration”) is currently registered on the Principal Register to a different company wherein the ‘363 Registration covers, inter alia, “cosmetics”—the same goods under Applicant’s application. So, here again as a second example, there are two marks on the Principal Register that include the same prominent term (i.e., BELLEZZA) and that cover the same goods as the owner of the ‘038 Registration and Applicant, respectively. As yet another example, there is precedent for one mark to cover tanning preparations while another very similar mark covers cosmetics and for such marks to coexist on the Principal Register. In the same way that the BELLEZZA Registration and the ‘363 Registration coexist, Applicant should be allowed to register its mark and coexist with the owner of the ‘038 Registration at least because of the differences between Applicant’s goods and the goods listed in the ‘038 Registration mentioned in Section I above.
V. Conclusion
Applicant asserts that on information and belief, it has fully addressed all of the issues raised by the Examining Attorney in the recent Office Action. In light thereof and based on the traversal set forth above, Applicant respectfully requests that this application be moved forward to publication for Applicant’s goods as amended.