| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88123548 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88123548/mark.png |
| LITERAL ELEMENT | HIGHLIGHT |
| 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) | |
|
The Examining Attorney has refused registration of Applicant's HIGHLIGHT mark for use with "fragrances" in Class 3 based on Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d), as likely to cause confusion with the mark HYLYT of Registration No. 4449965 also in Class 3, but for "non-medicated grooming preparations, namely, shampoo, conditioners and bath wash spray". Applicant respectfully traverses the rejection. It is well established that, in determining whether there is a likelihood of confusion between two marks, it is important to consider each of the following factors: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). Consideration of those factors demonstrates that there is no likelihood of confusion. With respect to the marks themselves, while they may potentially have similar pronunciations, they are vastly different in appearance and commercial impression. Applicant's mark is HIGHLIGHT whereas the cited mark is HYLYT. Whereas Applicant's mark is a well-known English word, the mark of Registration No. 4449965 is simply a combination of letters with no meaning. Consumers seeing the two marks would readily perceive these visual differences and not be confused. However, and perhaps more importantly, the goods and trade channels for Applicant's mark and those of Registration No. 4449965 are completely unrelated. Applicant's goods are fragrances, that is, perfumes which will be sold through Applicant's retail and online retail stores. By contrast, the goods of Registration No. 4449965 are grooming products, and specifically shampoos, conditioners and bath works spray. It appears that the Examining Attorney overlooked that the goods of Registration No. 4449965 are grooming products, that is for use with pets, and as such, products that are sold through pet stores or other retail or online retail locations selling pet care products. While the goods in the cited registration do not specifically reference pets, a review of the current ID manual shows that the only goods in Class 3 directed to shampoos, conditioners or soaps that include the word "grooming" are for use with pets: Term ID 004-150: Non-medicated grooming preparations for {indicate specific animal or category, e.g., cats, dogs, pets, livestock}, namely, {indicate name of preparation}
Term ID 003-1717: Non-medicated grooming preparations in the nature of shampoos for animals
Term ID 003-171: Pet shampoo [non-medicated, non-veterinary grooming preparation]
Term ID 003-1199: Non-medicated, non-veterinary grooming preparations in the nature of pet shampoo and conditioner
That the products being sold, and intended to be sold, under the HYLYT mark of Registration No. 4449965 are for pet care products is made clear from the specimen that was submitted for the registration on August 6, 2013 attached hereto as Exhibit 1, including an enlargement of the image at the bottom of the bottle, which are the profiles of a horse, dog and cat. And, if that were not enough, attached as Exhibit 2 are screenshots from the website of the owner of the registration – Bayer Healthcare Animal Health Inc., www.bayerdvm.com – taken on May 17, 2019, which shows confirms that its HYLYT product is for use with pets. Applicant respectfully submits that fragrances for use by people are not sold through the same channels of trade as pet grooming product, nor are they sold under the same marks. Accordingly, in view of the differences in the marks, the goods and the channels of trade, Applicant submits that there is no likelihood of confusion between the HIGHLIGHT mark of the present application and the HYLYT mark of Registration No. 4449965, the rejection of the present application should be withdrawn and the application passed to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_21613612218-20190517110859702860_._Exhibit_1.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\235\88123548\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\235\88123548\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\235\88123548\xml4\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_21613612218-20190517110859702860_._Exhibit_2.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\235\88123548\xml4\ROA0005.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\235\88123548\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\235\88123548\xml4\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | document downloaded from the TSDR database (Exhibit 1) and screenshots from an Internet website (Exhibit 2) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /theodore r remaklus/ |
| SIGNATORY'S NAME | Theodore R. Remaklus |
| SIGNATORY'S POSITION | Attorney for Applicant, Ohio bar member |
| SIGNATORY'S PHONE NUMBER | 5132412324 |
| DATE SIGNED | 05/17/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 17 11:11:49 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20190517111149256091-8812 3548-6206e70e934be38914c2 5b3f8f9d543c35e1b9fa55c2a 6a49e84d4e6ce3e24cd-N/A-N /A-20190517110859702860 |
| 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 09/20/2020) |
The Examining Attorney has refused registration of Applicant's HIGHLIGHT mark for use with "fragrances" in Class 3 based on Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d), as likely to cause confusion with the mark HYLYT of Registration No. 4449965 also in Class 3, but for "non-medicated grooming preparations, namely, shampoo, conditioners and bath wash spray". Applicant respectfully traverses the rejection.
It is well established that, in determining whether there is a likelihood of confusion between two marks, it is important to consider each of the following factors:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). Consideration of those factors demonstrates that there is no likelihood of confusion.
With respect to the marks themselves, while they may potentially have similar pronunciations, they are vastly different in appearance and commercial impression. Applicant's mark is HIGHLIGHT whereas the cited mark is HYLYT. Whereas Applicant's mark is a well-known English word, the mark of Registration No. 4449965 is simply a combination of letters with no meaning. Consumers seeing the two marks would readily perceive these visual differences and not be confused.
However, and perhaps more importantly, the goods and trade channels for Applicant's mark and those of Registration No. 4449965 are completely unrelated. Applicant's goods are fragrances, that is, perfumes which will be sold through Applicant's retail and online retail stores. By contrast, the goods of Registration No. 4449965 are grooming products, and specifically shampoos, conditioners and bath works spray. It appears that the Examining Attorney overlooked that the goods of Registration No. 4449965 are grooming products, that is for use with pets, and as such, products that are sold through pet stores or other retail or online retail locations selling pet care products. While the goods in the cited registration do not specifically reference pets, a review of the current ID manual shows that the only goods in Class 3 directed to shampoos, conditioners or soaps that include the word "grooming" are for use with pets:
Term ID 004-150: Non-medicated grooming preparations for {indicate specific animal or category, e.g., cats, dogs, pets, livestock}, namely, {indicate name of preparation}
Term ID 003-1717: Non-medicated grooming preparations in the nature of shampoos for animals
Term ID 003-171: Pet shampoo [non-medicated, non-veterinary grooming preparation]
Term ID 003-1199: Non-medicated, non-veterinary grooming preparations in the nature of pet shampoo and conditioner
That the products being sold, and intended to be sold, under the HYLYT mark of Registration No. 4449965 are for pet care products is made clear from the specimen that was submitted for the registration on August 6, 2013 attached hereto as Exhibit 1, including an enlargement of the image at the bottom of the bottle, which are the profiles of a horse, dog and cat. And, if that were not enough, attached as Exhibit 2 are screenshots from the website of the owner of the registration – Bayer Healthcare Animal Health Inc., www.bayerdvm.com – taken on May 17, 2019, which shows confirms that its HYLYT product is for use with pets.
Applicant respectfully submits that fragrances for use by people are not sold through the same channels of trade as pet grooming product, nor are they sold under the same marks. Accordingly, in view of the differences in the marks, the goods and the channels of trade, Applicant submits that there is no likelihood of confusion between the HIGHLIGHT mark of the present application and the HYLYT mark of Registration No. 4449965, the rejection of the present application should be withdrawn and the application passed to publication.
