Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88227244 CEL(Standard Characters, see http://uspto.report/TM/88227244/mark.png) has been amended as follows:

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

Dear Ms Noble, I refer to the Office Action dated March 20, 2019 for the ?cel? word mark with Serial No. 88227244. Applicant wishes to adopt the following identification amendments to class 3: CLASS 3 ? Cosmetics; non-medicated hair preparations and treatments for cosmetic purposes As the identification has been narrowed, Applicant wishes to submit a substitute specimen showing use of the mark on hair preparations. This also further reduces the chance of confusion with the cited marks, as discussed below. The Examining Attorney has refused registration of Applicant?s ?cel? word mark pursuant to Trademark Act Section 2(d), 15 U.S.C. ? 1052(d), on the ground that the mark is likely to be confused with ?CEL?FIT? word mark with Serial No. 87627823, and the ?CEL?FIT CF? device mark with Serial No. 87627927. The Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider the statutory refusal and allow registration of Applicant?s mark. The test for likelihood of confusion between two marks is determined by a review of all of the relevant factors under the du Pont test. The first factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.? In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). However, although the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services, ?there is no mechanical test for determining likelihood of confusion and ?each case must be decided on its own facts.?? TMEP ? 1207.01 (citing du Pont, 476 F.2d at 1361, 177 USPQ at 567). The Applicant submits that there is no likelihood that consumers will be confused as to the source of goods in connection with each of these marks because Applicant?s mark is different in appearance, sound, meaning, connotation, and commercial impression. In particular, with regards to appearance, the Applicant?s mark is represented by the letters ?cel? in lower case whereas the cited marks ?CEL?FIT? and ?CEL?FIT CF? are in upper case and have at least twice the amount of words with an unusual ??? character in the centre that further distinguishes the mark. The word FIT is a significant and integral part of the cited marks as it refers to a fitted eye mask product and both CEL and FIT are further emphasised by being part of the initials CF in the device mark. With regards to sound, other than the word ?cel? the pronunciation of ?CEL FIT? and ?CEL FIT CF? is clearly distinguishable, with the cited marks taking at least twice as long to pronounce. It is clear that the words ?FIT? and ?FIT CF? would be pronounced separately, and that, there is no likelihood of confusion among consumers who hear the cited marks and Applicant's mark due to the lack of aural similarity between the cited marks and Applicant's mark. With regards to the meaning or connotation, there is no clear meaning to either the Applicant?s mark and the cited marks other than suggesting the use of biological cells in the manufacture of the product. Notably, the cited marks ?CEL?FIT? and ?CEL?FIT CF? suggest a different concept of fitting the cell-based product to a face as part of their eye mask. This concept is not suggested by the Applicant?s mark. It is further noted that weak or descriptive marks are entitled to a narrower scope of protection (see TMEP 1207.01(b)(ix)). Considering the overall commercial impression, the Applicant?s mark consists of the letters ?cel? in lower case, case creates a minimalist, subtle and inconspicuous impression, which is unusual for trademarks which are typically designed to stand out. By contrast, the cited marks are in conspicuous upper case and twice as long, with distinctive punctuation and the words ?FIT? and ?FIT CF?, which, along with the word ?CEL? are suggestive that the product involves the fitting of a cell-based product to a person. The mark ?cel? has no such connotation, it is simply 3 letters in lower case. When material is added to a registered mark creates a different overall commercial impression, the additions are sufficient to avoid a finding of likely confusion (see Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The goods used in connection with Applicant?s mark and the cited registrations are also different, being primarily hair products (namely, cel Shampoo and conditioner, cel Hair Formula, cel Brow and Lash formula), and operate solely in online marketing channels, whereas the cited marks relate to an eye patch product. The Applicant has only found one website link showing the Applicant?s product, with no means of purchasing online: http://www.cosmoprofawards- asia.com/en/contest/product/view/2218 ? see Attachment 1. By contrast, the Applicant?s ?cel? mark can be purchased online, primarily for hair products available for purchase via the Applicant?s website, www.cel.md ? see Attachment 2. Applicant?s ?cel?-branded hair products have significant online exposure in the United States (i.e. e-commerce website, Facebook, Instagram) with no instances of confusion regarding source of the goods with the owner of the cited marks. In particular, over the last 12 months, the Applicant has sold at least US$9 million of hair products under the ?cel? mark and has spent at least US$4.2 million on Facebook and US$250,000 on Google and Amazon with 2.3 million unique impressions leading to hits on Applicant?s website. In conclusion, Applicant?s ?cel? mark differs from the cited marks ?CEL?FIT? and ?CEL?FIT CF? in sound, appearance, connotation, and commercial impression. The marks are used on different products and marketing channels that do not overlap. Because of these differences, there is no risk that a customer would confuse the source of the Applicant?s goods with the owner of the cited marks. Applicant wishes to reserve its rights including the submission of further arguments in support, as it notes that the cited marks have also received an adverse Office Action (refusing registration because of a likelihood of confusion with the mark in U.S. Registration No. 5571874 (?CL CELEFIT?)) and no use in US interstate commerce has been alleged. Yours faithfully, Savva Kerdemelidis, IP Officer ALTITUDE ADS LIMITED

EVIDENCE
Evidence in the nature of Attachment 1 consists of a printout of a website showing the cited marks used on its product. Attachment 2 consists of a printout of Applicant's website showing Applicant's marks used on its products. has been attached.
Original PDF file:
evi_85255232167-20190411114703152277_._Attachment_1_CEL_FIT.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_85255232167-20190411114703152277_._Attachment_2_cel.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Cosmetics; face masks; skincare preparations; hair preparations and treatments
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 03/01/2018 and first used in commerce at least as early as 03/01/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Cosmetics; face masks; non-medicated hair preparations and treatments for cosmetic purposes; skincare preparations; hair preparations and treatmentsClass 003 for Cosmetics; non-medicated hair preparations and treatments for cosmetic purposes
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 03/01/2018 and first used in commerce at least as early as 03/01/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 003 . The specimen(s) submitted consists of Website screenshot showing Applicant's mark on its products .
"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].
Original PDF file:
SPU0-85255232167-20190411114703152277_._Celspecimen_v2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory 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 submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /savva kerdemelidis/      Date: 04/11/2019
Signatory's Name: Savva Kerdemelidis
Signatory's Position: IP Officer

Response Signature
Signature: /savva kerdemelidis/     Date: 04/11/2019
Signatory's Name: Savva Kerdemelidis
Signatory's Position: IP Officer

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88227244
Internet Transmission Date: Thu Apr 11 12:18:13 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904111218138
55844-88227244-6203f25c63acd26f014b71a9a
b1986be95be2efb3738579ca3ea1713abe9659-N
/A-N/A-20190411114703152277