| 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 | 88381587 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88381587/mark.png |
| LITERAL ELEMENT | SOOTHE |
| 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) | |
|
Registration was refused because of an alleged likelihood of confusion between Applicant’s mark for SOOTHE and Registration No. 3167964 for SOOTHEX (the “Cited Mark”). Applicant respectfully submits there is no likelihood of confusion between Applicant’s mark and the Cited Mark.
In refusing registration, the Examining Attorney focused on two factors set forth in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973): the similarity of the marks and the relatedness of the goods.
Likelihood of confusion is tested under the six factors set forth in In re E. I. du Pont de Nemours & Co.,476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973): (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the relatedness of the goods or services as described in the application and registration(s); (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing; (5) the number and nature of similar marks in use on similar goods; and (6) the existence of a valid consent agreement between the applicant and the owner of the previously registered mark. See TMEP § 1207.01.
Here, a careful review of the relevant du Pont factors establishes that there is no likelihood of confusion between Applicant’s mark and the Cited Mark.
I. The Marks Are Dissimilar Applicant’s mark and the Cited Mark are dissimilar in their entireties as to appearance, sound, connotation, and commercial impression, such that confusion between the marks is unlikely. “Rather than consider the similarities between the component parts of the marks, we must evaluate the impression that each mark in its entirety is likely to have on a purchaser exercising the attention usually given by purchasers of such products.” Duluth News-Tribune, a Div. of Nw. Publ’n, Inc. v. Mesabi Pub. Co., 84 F.3d 1093, 1096 (8th Cir. 1996). Moreover, “[t]he use of identical, even dominant, words in common does not automatically mean that two marks are similar.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987).
First, the appearance of the Cited Mark differs from Applicant’s mark. Applicant’s mark is the monosyllabic word SOOTHE, whereas the Cited Mark is has no meaning in the English language, and adds an additional syllable – SOOTHEX. This gives the marks very different sounds, with entirely different emphases.
The marks also have different connotations and commercial impressions, with Applicant’s SOOTHE mark creating a commercial impression of a natural soothing or peacefulness, whereas the Cited Mark – SOOTHEX – has no known meaning, and creates a much harsher commercial impression. Moreover, when considering the goods with which the Cited Mark is used – chemicals for toiletries, cosmetics, and detergents – the SOOTHEX mark creates the commercial impression of a chemical name or some obscure manufactured chemical compound, which is wholly distinct from the connotation and commercial impression of Applicant’s mark, which as noted above creates a commercial impression of a soothing or peaceful product.
As such, the first factor weighs against a finding of confusion.
II. The Goods Are Dissimilar Where “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).
The Cited Mark, removing cancelled matter, is for “chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of toiletries and cosmetics, chemicals for use in the manufacture of deodorants and deodorizing agents; chemicals for use in the manufacture and formulation of fragrances and perfumes; chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of household and industrial detergents” in Class 1.
Applicant’s mark, on the other hand, is for “desiccants; humectants; desiccants for removing moisture in products stored or distributed in airtight and non-airtight packaging and containers, and for use in small and large rooms or enclosed spaces; desiccants for use with smokable products; humectants for controlling and stabilizing the dew point and humidity for products stored or distributed in airtight and non-airtight packaging and containers, and for use in small and large rooms or enclosed spaces; humectants for use with smokable products; chemicals for removing oxygen, odors and gases from products stored and distributed in airtight and non-airtight packaging and containers, and for use in small and large rooms or enclosed spaces; chemicals for absorbing oxygen and odor for use with smokable products; chemical humidity indicator cards” in class 1 and “Humidity control device, namely, a portable and sealed device containing a moisture-sensitive silica co-polymer that absorbs or releases moisture to maintain relative humidity in a particular range within a closed environment; ozone generators for removing odors, controlling pests, and extending shelf life of non-industrial products; ozone generators for removing odors, controlling pests, and extending shelf life in smokable, edible, and consumable products; ozone generators for controlling the levels of odor, bacteria, and pests in small and large rooms and enclosed spaces” in Class 11.
Here, the parties’ marks are used in association with distinct goods that are not related to each other, nor marketed in such a way that confusion is likely. Indeed, the Cited Mark is for chemical additives used during manufacturing of cosmetics, toiletries, and detergents, and is not for the end product itself. In contrast, Applicant’s mark is for actual, distinct products, such as desiccants, humectants, and ozone generators. These goods – additives during manufacturing and humidity controllers – are simply not related, and there is no apparent overlap between the parties’ end users that would make confusion as to source, sponsorship, or affiliation likely. As such, this factor weighs against a finding of likelihood of confusion.
III. The Goods Are Marketed in Different Channels The parties’ products under the respective marks are also offered under dissimilar, likely-to-continue trade channels. As discussed above, the Cited Mark is for additives used during the manufacturing of cosmetics, toiletries, and detergents, which are offered for sale in trade channels directed to the manufacturers of cosmetics, toiletries, and detergents. In contrast, applicant’s products are marketed in wholly distinct trade channels for desiccants, humectants, and oxygen absorbers (e.g., bulk shippers, retailers, and others needing packaging and containers for consumer goods during shipment and/or storage). The parties’ mark are used in association with goods that are used in entirely distinct segments of the distribution process, and for different goods. This factor also weighs against a finding of likelihood of confusion.
IV. Purchasers are Sophisticated The purchasers of the parties’ products are careful, sophisticated purchasers, further weighing against a finding of a likelihood of confusion. Chemical manufacturing requires precision, and the use of particular products is extremely important to maintain manufacturing standards. Accordingly, purchasers of chemicals for manufacturing toiletries and cosmetics must understand what they are purchasing and undoubtedly will spend significant time in determining that a product meets their needs. Purchasers of Applicant’s products are also sophisticated, as Applicant’s products are typically purchased in bulk and used during shipping of expensive products, such as leather goods. Moreover, the use of a low-quality brand can result in significant damage to other products in an environment with which Applicant’s products are used, so purchasers are highly motivated to use care in purchasing Applicant’s products. As such, the fourth Du Pont factor also weighs against a likelihood of confusion.
As such, considering the Du Pont factors in their entirety, it is clear that there is no likelihood of confusion between the parties’ respective marks. As such, Applicant requests that refusal under Section 2(d) be withdrawn. |
|
| GOODS AND/OR SERVICES SECTION (001)(no change) | |
| GOODS AND/OR SERVICES SECTION (011)(current) | |
| INTERNATIONAL CLASS | 011 |
| DESCRIPTION | |
| HUMIDITY CONTROL DEVICE, NAMELY, A PORTABLE AND SEALED DEVICE CONTAINING A MOISTURE-SENSITIVE SILICA CO-POLYMER THAT ABSORBS OR RELEASES MOISTURE TO MAINTAIN RELATIVE HUMIDITY IN A PARTICULAR RANGE WITHIN A CLOSED ENVIRONMENT; OZONE GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE OF NON-INDUSTRIAL PRODUCTS; OZONE GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE IN SMOKABLE, EDIBLE, AND CONSUMABLE PRODUCTS; OZONE GENERATORS FOR CONTROLLING THE LEVELS OF ODOR, BACTERIA, AND PESTS IN SMALL AND LARGE ROOMS AND ENCLOSED SPACES | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (011)(proposed) | |
| INTERNATIONAL CLASS | 011 |
| TRACKED TEXT DESCRIPTION | |
| HUMIDITY CONTROL DEVICE, NAMELY, A PORTABLE AND SEALED DEVICE CONTAINING A MOISTURE-SENSITIVE SILICA CO-POLYMER THAT
ABSORBS OR RELEASES MOISTURE TO MAINTAIN RELATIVE HUMIDITY IN A PARTICULAR RANGE WITHIN A CLOSED ENVIRONMENT; |
|
| FINAL DESCRIPTION | |
| HUMIDITY CONTROL DEVICE, NAMELY, A PORTABLE AND SEALED DEVICE CONTAINING A MOISTURE-SENSITIVE SILICA CO-POLYMER THAT ABSORBS OR RELEASES MOISTURE TO MAINTAIN RELATIVE HUMIDITY IN A PARTICULAR RANGE WITHIN A CLOSED ENVIRONMENT; OZONE GENERATORS THAT KILL MOLD AND MILDEW, NAMELY, GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE OF NON-INDUSTRIAL PRODUCTS; OZONE GENERATORS THAT KILL MOLD AND MILDEW, NAMELY, GENERATORS FOR REMOVING ODORS, CONTROLLING PESTS, AND EXTENDING SHELF LIFE IN SMOKABLE, EDIBLE, AND CONSUMABLE PRODUCTS; OZONE GENERATORS THAT KILL MOLD AND MILDEW, NAMELY, GENERATORS FOR CONTROLLING THE LEVELS OF ODOR, BACTERIA, AND PESTS IN SMALL AND LARGE ROOMS AND ENCLOSED SPACES | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | In an Office action issued on June 21, 2019, the Examining Attorney refused registration based on an alleged likelihood of confusion based on a prior registered mark and required a clarification of identification of goods in International Class 11. |
| ATTORNEY SECTION (current) | |
| NAME | Gary J. Nelson |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | LEWIS ROCA ROTHGERBER CHRISTIE LLP |
| STREET | P.O. BOX 29001 |
| CITY | GLENDALE |
| STATE | California |
| POSTAL CODE | 91209-9001 |
| COUNTRY | US |
| PHONE | 626-795-9900 |
| FAX | 626-577-8800 |
| pto@lrrc.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 169491 |
| ATTORNEY SECTION (proposed) | |
| NAME | Gary J. Nelson |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | LEWIS ROCA ROTHGERBER CHRISTIE LLP |
| STREET | P.O. BOX 29001 |
| CITY | GLENDALE |
| STATE | California |
| POSTAL CODE | 91209-9001 |
| COUNTRY | United States |
| PHONE | 626-795-9900 |
| FAX | 626-577-8800 |
| pto@lrrc.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 169491 |
| OTHER APPOINTED ATTORNEY | David A. Dillard, Thomas J. Daly, Edward R. Schwartz, David A. Plumley, Gregory S. Lampert, Mark Garscia, Syed A. Hasan, Robert A. Green, Michael J. MacDermott, Anne Wang, Constantine Marantidis, Gary J. Nelson, Raymond R. Tabandeh, Josephine E. Chang, Jun-Young E. Jeon, Peter C. Hsueh, Oliver S. Bajracharya, Lauren E. Schneider, G. Warren Bleeker, Jason C. Martone, Joshua T. Chu, Justin O. Ehresmann, Shaun P. Lee, Ryan M. Swank, Dustin R. Szakalski, Katherine L. Quigley, Michael J. Curry, Abazar Mireshghi, Kyle W. Kellar, Martin W. Regehr, Sami I. Schilly, S. Drew Wilson, Olga M. Katsnelson, John Carson, Cindy A. Villanueva, Daniel A. Salgado, Nancy R. Snow, Clara C. Low, Jimmy Y. Kwun, Jeffrey C. Tom, Alek C. Emery, Kurt S. Prange, Steven J. French |
| CORRESPONDENCE SECTION (current) | |
| NAME | GARY J. NELSON |
| FIRM NAME | LEWIS ROCA ROTHGERBER CHRISTIE LLP |
| STREET | P.O. BOX 29001 |
| CITY | GLENDALE |
| STATE | California |
| POSTAL CODE | 91209-9001 |
| COUNTRY | US |
| PHONE | 626-795-9900 |
| FAX | 626-577-8800 |
| pto@lrrc.com; gnelson@lrrc.com; ctoomey@lrrc.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 169491 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Gary J. Nelson |
| FIRM NAME | LEWIS ROCA ROTHGERBER CHRISTIE LLP |
| STREET | P.O. BOX 29001 |
| CITY | GLENDALE |
| STATE | California |
| POSTAL CODE | 91209-9001 |
| COUNTRY | United States |
| PHONE | 626-795-9900 |
| FAX | 626-577-8800 |
| pto@lrrc.com; gnelson@lrrc.com; ctoomey@lrrc.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 169491 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Gary J. Nelson/ |
| SIGNATORY'S NAME | Gary J. Nelson |
| SIGNATORY'S POSITION | Attorney of Record, California Bar Member |
| SIGNATORY'S PHONE NUMBER | 626-795-9900 |
| DATE SIGNED | 12/18/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 18 17:49:53 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 191218174953271591-883815 87-7001eb971d1f753ccd4a34 e1555aa6942addc6918aa6850 db8b374c5c716ea3e5-N/A-N/ A-20191218172115468661 |
| 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) |
Registration was refused because of an alleged likelihood of confusion between Applicant’s mark for SOOTHE and Registration No. 3167964 for SOOTHEX (the “Cited Mark”). Applicant respectfully submits there is no likelihood of confusion between Applicant’s mark and the Cited Mark.
In refusing registration, the Examining Attorney focused on two factors set forth in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973): the similarity of the marks and the relatedness of the goods.
Likelihood of confusion is tested under the six factors set forth in In re E. I. du Pont de Nemours & Co.,476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973): (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the relatedness of the goods or services as described in the application and registration(s); (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing; (5) the number and nature of similar marks in use on similar goods; and (6) the existence of a valid consent agreement between the applicant and the owner of the previously registered mark. See TMEP § 1207.01.
Here, a careful review of the relevant du Pont factors establishes that there is no likelihood of confusion between Applicant’s mark and the Cited Mark.
I. The Marks Are Dissimilar
Applicant’s mark and the Cited Mark are dissimilar in their entireties as to appearance, sound, connotation, and commercial impression, such that confusion between the marks is unlikely. “Rather than consider the similarities between the component parts of the marks, we must evaluate the impression that each mark in its entirety is likely to have on a purchaser exercising the attention usually given by purchasers of such products.” Duluth News-Tribune, a Div. of Nw. Publ’n, Inc. v. Mesabi Pub. Co., 84 F.3d 1093, 1096 (8th Cir. 1996). Moreover, “[t]he use of identical, even dominant, words in common does not automatically mean that two marks are similar.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987).
First, the appearance of the Cited Mark differs from Applicant’s mark. Applicant’s mark is the monosyllabic word SOOTHE, whereas the Cited Mark is has no meaning in the English language, and adds an additional syllable – SOOTHEX. This gives the marks very different sounds, with entirely different emphases.
The marks also have different connotations and commercial impressions, with Applicant’s SOOTHE mark creating a commercial impression of a natural soothing or peacefulness, whereas the Cited Mark – SOOTHEX – has no known meaning, and creates a much harsher commercial impression. Moreover, when considering the goods with which the Cited Mark is used – chemicals for toiletries, cosmetics, and detergents – the SOOTHEX mark creates the commercial impression of a chemical name or some obscure manufactured chemical compound, which is wholly distinct from the connotation and commercial impression of Applicant’s mark, which as noted above creates a commercial impression of a soothing or peaceful product.
As such, the first factor weighs against a finding of confusion.
II. The Goods Are Dissimilar
Where “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).
The Cited Mark, removing cancelled matter, is for “chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of toiletries and cosmetics, chemicals for use in the manufacture of deodorants and deodorizing agents; chemicals for use in the manufacture and formulation of fragrances and perfumes; chemicals, namely, dispersing, stabilizing, bleaching and wetting agents for use in the manufacture of household and industrial detergents” in Class 1.
Applicant’s mark, on the other hand, is for “desiccants; humectants; desiccants for removing moisture in products stored or distributed in airtight and non-airtight packaging and containers, and for use in small and large rooms or enclosed spaces; desiccants for use with smokable products; humectants for controlling and stabilizing the dew point and humidity for products stored or distributed in airtight and non-airtight packaging and containers, and for use in small and large rooms or enclosed spaces; humectants for use with smokable products; chemicals for removing oxygen, odors and gases from products stored and distributed in airtight and non-airtight packaging and containers, and for use in small and large rooms or enclosed spaces; chemicals for absorbing oxygen and odor for use with smokable products; chemical humidity indicator cards” in class 1 and “Humidity control device, namely, a portable and sealed device containing a moisture-sensitive silica co-polymer that absorbs or releases moisture to maintain relative humidity in a particular range within a closed environment; ozone generators for removing odors, controlling pests, and extending shelf life of non-industrial products; ozone generators for removing odors, controlling pests, and extending shelf life in smokable, edible, and consumable products; ozone generators for controlling the levels of odor, bacteria, and pests in small and large rooms and enclosed spaces” in Class 11.
Here, the parties’ marks are used in association with distinct goods that are not related to each other, nor marketed in such a way that confusion is likely. Indeed, the Cited Mark is for chemical additives used during manufacturing of cosmetics, toiletries, and detergents, and is not for the end product itself. In contrast, Applicant’s mark is for actual, distinct products, such as desiccants, humectants, and ozone generators. These goods – additives during manufacturing and humidity controllers – are simply not related, and there is no apparent overlap between the parties’ end users that would make confusion as to source, sponsorship, or affiliation likely. As such, this factor weighs against a finding of likelihood of confusion.
III. The Goods Are Marketed in Different Channels
The parties’ products under the respective marks are also offered under dissimilar, likely-to-continue trade channels. As discussed above, the Cited Mark is for additives used during the manufacturing of cosmetics, toiletries, and detergents, which are offered for sale in trade channels directed to the manufacturers of cosmetics, toiletries, and detergents. In contrast, applicant’s products are marketed in wholly distinct trade channels for desiccants, humectants, and oxygen absorbers (e.g., bulk shippers, retailers, and others needing packaging and containers for consumer goods during shipment and/or storage). The parties’ mark are used in association with goods that are used in entirely distinct segments of the distribution process, and for different goods. This factor also weighs against a finding of likelihood of confusion.
IV. Purchasers are Sophisticated
The purchasers of the parties’ products are careful, sophisticated purchasers, further weighing against a finding of a likelihood of confusion. Chemical manufacturing requires precision, and the use of particular products is extremely important to maintain manufacturing standards. Accordingly, purchasers of chemicals for manufacturing toiletries and cosmetics must understand what they are purchasing and undoubtedly will spend significant time in determining that a product meets their needs. Purchasers of Applicant’s products are also sophisticated, as Applicant’s products are typically purchased in bulk and used during shipping of expensive products, such as leather goods. Moreover, the use of a low-quality brand can result in significant damage to other products in an environment with which Applicant’s products are used, so purchasers are highly motivated to use care in purchasing Applicant’s products. As such, the fourth Du Pont factor also weighs against a likelihood of confusion.
As such, considering the Du Pont factors in their entirety, it is clear that there is no likelihood of confusion between the parties’ respective marks. As such, Applicant requests that refusal under Section 2(d) be withdrawn.