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. 88352667 VISAGE (Stylized and/or with Design, see http://uspto.report/TM/88352667/mark.png) has been amended as follows:

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

Response to Section 2(d) Refusal - Likelihood of Confusion (as to “ultra-violet sunray lamps for cosmetic purposes” only)

The Trademark Examining Attorney has refused registration of the Applicant’s mark, ViSAGE, for “ultra-violet sunray lamps for cosmetic purposes” in Class 11 on the basis that she believes the Applicant’s mark is confusingly similar to the following registered mark:

VISAGE PRO (Reg. No. 4502203), owned by SkinAgain, LLC, a dissolved and cancelled California limited liability company, for "cosmetic apparatus, namely, light based devices providing mainly pulsed light for performing non-ablative aesthetic skin treatment procedures; ultrasonic stimulators, magnet therapy stimulators and laser therapy stimulators; electronic aesthetic skin treatment devices using light emitting diodes, namely, infrared, red, orange, yellow, green, and blue wavelengths for generating light rays; electronic light therapy apparatus for the skin; electronic stimulator for the skin; facial toning machines for cosmetic use; lasers for the cosmetic treatment of the face and skin; light emitting devices, namely, lamps and LED devices for treatment of a variety of skin conditions; light-based medical devices, namely, a light emitting diode (LED) device for increasing the human body's own production of collagen" in International Class 10.

For the reasons discussed below, the Applicant submits that there is no likelihood of confusion and respectfully requests withdrawal of the Trademark Examining Attorney’s refusal.

The Applicant, ALDI Inc., is a retail grocery store chain. Most products sold are ALDI Inc.’s private-label products, including the goods listed in the present application. Because the Applicant’s goods are sold in its grocery stores to individual consumers who are familiar with the Applicant and its private-label products, it would be highly unusual for the goods to be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods came from a common source. Purchasers would never expect to find the Registrant’s goods in ALDI Inc.’s grocery stores. Likewise, customers would not expect to find ALDI Inc.’s products in stores other than those of ALDI Inc. Where the trade channels differ, as they do here, confusion is unlikely. In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783 (T.T.A.B. 1993).

As part of its response herein, the Applicant has amended “ultra-violet sunray lamps for cosmetic purposes” in the application to “ultra-violet sunray lamps for cosmetic purposes, not for medical applications”.  The Applicant submits that this change further differentiates the goods at issue.    

In a likelihood of confusion analysis, the marks are compared for similarities in their appearance, sound, connotation or meaning and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). It is well settled that marks need to be considered in their entireties; the way consumers encounter them. Their individual components or features should not be dissected or analyzed piecemeal. In re National Data Corporation, 224 U.S.P.Q. 749, 750 (Fed. Cir. 1985). The commercial impression of a mark is derived from it as a whole, not from elements separated and considered in detail. Security Center, Ltd. v. First National Security Centers, 225 U.S.P.Q. 373, 378 (5^th Cir. 1985).  The court in Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 U.S.P.Q. 151 (1978), held that the Applicant’s mark in that case had to be considered in its entirety and stated that the presence of the word “RED” in the Applicant’s mark could not be dismissed as an identification factor.  In that case, RED ZINGER for herb tea was found to be distinguishable per se from ZINGERS for cakes.  Similarly, in King Candy Company v. Eunice King’s Kitchen, Inc., 182 U.S.P.Q. 108 (1974), the Court held that confusion was unlikely between KING’S as used on candy and MISS KING’S as used on cakes.  When the respective marks in this case are considered in their entirety, there are obvious and sufficient differences in appearance, sound and commercial impression.

Although the Trademark Examining Attorney states that the Applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the Registrant’s mark and does not add any wording that would distinguish it from that mark, the Applicant submits that the additional wording and the differences in the Registrant’s mark cannot be ignored.  When the respective marks are considered in their entirety, an appearance, sound and commercial impression that sufficiently distinguishes them becomes clear.  Potential purchasers seeing both of the marks would immediately perceive the dissimilarities.  Consequently, the Applicant’s mark creates a different visual impression than that of the cited mark.  See Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 228 U.S.P.Q. 364 (Fed. Cir. 1986) (finding that ROMANBURGER and ROMAN for food products are not similar in their entireties as to appearance).

The Applicant’s mark and the cited mark also differ in sound and pronunciation.  The Applicant’s mark sounds and is pronounced entirely differently from the cited mark due to the cited mark containing the additional term PRO.  The Applicant’s mark contains two syllables, while the cited mark contains three syllables.  Upon hearing the respective marks, potential purchasers would ascertain the different sound impression of the Applicant’s ViSAGE mark and the cited VISAGE PRO mark.  See Bell Laboratories, Inc. v. Colonial Products., Inc., 644 F. Supp. 542, 547 (S.D. Fla. 1986) (FINAL FLIP and FLIP for the same product are “ultimately different and different sounding.”)

The mere fact that the Applicant’s mark and the cited registration share a common literal element is insufficient to render confusion likely in view of the differences in the remainder of the marks.  See, e.g. In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992) (finding VARGA GIRL for calendars does not look or sound like VARGAS for calendars, posters, and similar goods; see also J. Wiss and Sons Co. v. Gee Whiz Tool Corp., 150 U.S.P.Q. 583, 584 (6^th Cir. 1966) (finding no likelihood of confusion between WIZZ and GEE WHIZ for pruning shears); see also Knapp-Monarch Co. v. Poloron Products, Inc., 134 U.S.P.Q. 412, 414 (T.T.A.B. 1962) (finding THERMEX for insulated picnic jugs, boxes and containers does not look or sound like THERM-A-JUG for insulated beverage containers).

Even when goods or services are identical, the mere inclusion of the same term in marks is not a proper basis upon which to assert that confusion is likely where the remaining portions of the marks are sufficient to distinguish between them. In re Hamilton Bank, 222 U.S.P.Q. 174, 178 (T.T.A.B. 1984). Ultimately, the "[s]imilarity is determined on the basis of the total effect of the designation, rather than a comparison of individual features." See Pignons S.A. de Mecanique de Precision v. Polaroid Corporation, 212 U.S.P.Q. 246, 250 (1st Cir. 1981). As the Federal Circuit indicated in Opryland USA, Inc. v. Great American Music Show, Inc., in finding that the Board erred by failing to consider the marks as a whole, "[w]hen it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared." 23 U.S.P.Q.2d 1471, 1473 (Fed. Cir. 1992).

In this case, the Applicant submits that the differences in the respective marks cannot be ignored. Potential purchasers seeing or hearing the applied-for mark versus the registered mark would immediately perceive the dissimilarities. Consequently, the Applicant’s mark creates a different visual and aural impression than that of the registered mark. 

Besides the differences in the marks, the activities and conditions surrounding the channels of trade are such that there is no likelihood of confusion as to origin. The fact that the Applicant’s applied-for goods are sold in its own grocery stores to individual consumers who are familiar with the Applicant and its private-label products further mitigates against any opportunity for confusion.

Further, according to the USPTO, there are at least 40 marks registered on the Principal Register that consist of or incorporate “VISAGE”.  See Exhibit A.  Given the existence of numerous VISAGE-formative marks in the Federal Register, the Applicant submits that the differences between the Applicant’s mark and the Registrant’s mark are sufficient to distinguish them.

Confusion is ultimately to be decided on the basis of whether there is confusion as to source of origin of the goods. See Globe-Union Inc. V. Raven laboratories Inc., 180 U.S.P.Q. 469 (T.T.A.B. 1973). Given the differences between the respective marks and goods, the Applicant respectfully submits there is no likelihood of confusion as to source of origin between the cited registration and the Applicant’s mark. Confusion should not be concerned with "diminimus" situations, but rather with the practicalities of the real world in which trademarks exist. See MTD Products Inc. v. Universal Tire Corporation, 193 U.S.P.Q. 56 (T.T.A.B. 1976). It is not sufficient that there exists a "possibility" that the subject mark will engender confusion with the cited registrations for a holding of likelihood of confusion. See Carter-Wallace, Inc. v. Procter & Gamble Co., 167 U.S.P.Q. 713 (9^th Cir. 1970). A refusal to register based upon confusing similarities should be made when a "likelihood" meaning "probability" of confusion has been established and not merely a "possibility" of confusion between the marks in question in conjunction with the marks. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:3 (5^th Ed.). 

Based on the above, the Applicant submits that confusion in the marketplace is highly unlikely. Accordingly, it is respectfully requested that the refusal of registration under Trademark Act §2(d) be withdrawn.

EVIDENCE
Evidence in the nature of USPTO registrations (Exhibit A) has been attached.
Original PDF file:
evi_16220199137-20191016160546811894_._20191016145720.pdf
Converted PDF file(s) ( 41 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
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Evidence-10
Evidence-11
Evidence-12
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Evidence-19
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Evidence-40
Evidence-41

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for electronic steam facial apparatus; electric blankets for household purposes; ultra-violet sunray lamps for cosmetic purposes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: electronic steam facial apparatus; electric blankets for household purposes; ultra-violet sunray lamps for cosmetic purposes; ultra-violet sunray lamps for cosmetic purposes, not for medical applicationsClass 011 for electronic steam facial apparatus; electric blankets for household purposes; ultra-violet sunray lamps for cosmetic purposes, not for medical applications
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

The applicant's current attorney information: Vincent J. Elders. Vincent J. Elders of SMITH, LANDMEIER & ELDERS, P.C., is located at

      15 N. SECOND STREET
      GENEVA, Illinois 60134
      US
The docket/reference number is 22263.576.

The phone number is 630-232-2880.

The fax number is 630-232-2889.

The email address is trademarks@smithlandmeier.com

The applicants proposed attorney information: Vincent J. Elders. Vincent J. Elders of Smith, Landmeier & Elders, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      309 Hamilton Street, Suite E
      Geneva, Illinois 60134
      United States
The docket/reference number is 22263.576.

The phone number is 630-232-2880.

The fax number is 630-232-2889.

The email address is trademarks@smithlandmeier.com

Vincent J. Elders submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: VINCENT J. ELDERS. VINCENT J. ELDERS of SMITH, LANDMEIER & ELDERS, P.C., is located at

      15 N. SECOND STREET
      GENEVA, Illinois 60134
      US
The docket/reference number is 22263.576.

The phone number is 630-232-2880.

The fax number is 630-232-2889.

The email address is trademarks@smithlandmeier.com

The applicants proposed correspondence information: Vincent J. Elders. Vincent J. Elders of Smith, Landmeier & Elders, P.C., is located at

      309 Hamilton Street, Suite E
      Geneva, Illinois 60134
      United States
The docket/reference number is 22263.576.

The phone number is 630-232-2880.

The fax number is 630-232-2889.

The email address is trademarks@smithlandmeier.com

SIGNATURE(S)
Response Signature
Signature: /Vincent J. Elders/     Date: 10/16/2019
Signatory's Name: Vincent J. Elders
Signatory's Position: Attorney of record, Illinois Bar member

Signatory's Phone Number: 630-232-2880

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    VINCENT J. ELDERS
   SMITH, LANDMEIER & ELDERS, P.C.
   
   15 N. SECOND STREET
   GENEVA, Illinois 60134
Mailing Address:    Vincent J. Elders
   Smith, Landmeier & Elders, P.C.
   309 Hamilton Street, Suite E
   Geneva, Illinois 60134
        
Serial Number: 88352667
Internet Transmission Date: Wed Oct 16 16:43:20 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201910161643202
21039-88352667-61037f0f72afb1e57ff6926fc
e54a36609931fba6a0dff1a78fa1d09ce45e6060
49-N/A-N/A-20191016160546811894