| 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 | 88486726 |
| LAW OFFICE ASSIGNED | LAW OFFICE 126 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88486726/mark.png |
| LITERAL ELEMENT | DESI |
| 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. |
| OWNER SECTION (current) | |
| NAME | Desi Perkins, Inc. |
| STREET | 428 Main Street, Suite 202 |
| CITY | Huntington Beach |
| STATE | California |
| ZIP/POSTAL CODE | 92648 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Desi Perkins, Inc. |
| STREET | 428 Main Street, Suite 202 |
| CITY | Huntington Beach |
| STATE | California |
| ZIP/POSTAL CODE | 92648 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| trademark@buchalter.com | |
| ARGUMENT(S) | |
|
Responsive to the Office Action dated September 16, 2019, reconsideration of this case is respectfully requested. The Examining Trademark Attorney has preliminarily rejected this application on the ground that Applicant’s mark is confusingly similar to US Registration No. 2728230 for the mark DESI covering “cosmetics, namely, eyeliners, lipstick, nail polish, nail polish remover, and pressed powders” in International Class 3. Applicant respectfully submits that the Examining Attorney has not provided any evidence in support of his claim that Applicant’s Class 9 eyewear goods are similar to the cosmetic products identified in the cited registration. In comparing goods in a likelihood of confusion analysis, “[t]he issue to be determined . . . is not whether the goods . . . are likely to be confused but rather whether there is a likelihood that purchasers will be misled into the belief that they emanate from a common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). It must be established that the respective goods are related in some manner or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, in light of the similarity of the marks, give rise to the mistaken belief that the services come from or are associated with the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). The Examining Attorney argues that Applicant’s eyewear products are closely related to the cosmetic goods identified in the cited registration because “both are the types of goods offered by the same entities under the same marks.” The only evidence the Examining Attorney submits to support this position are screenshots of eyeglass and cosmetic product pages from the websites of fashion brands Tom Ford, Burberry, Chanel and Gucci. However, these screenshots are woefully insufficient to establish a nexus between eyewear and cosmetics. The Trademark Trial and Appeal Board has long recognized that third party designer names and house marks (like Tom Ford, Burberry, Chanel and Gucci) have less probative value to show that goods are related because the marks are licensed for a broader range of unrelated goods and services. In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1954 n. 3 (TTAB 1994) (“[S]ince house marks can be used to identify a broad range of products, the inclusion of soccer balls and rackets in the identification is not particularly significant.”); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989) (“In considering this evidence [third-party registrations and exhibits], we have kept in mind defendant’s observation that the link between personal care products and wearing apparel is generally apparent in the category of so-called designer or high-fashion marks, and usually involves the names of well-known designers.”); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988) (“two of the four registrations which were based on use were issued to Saks & Company and to Knott's Berry Farm, owners of a large department store and an amusement or theme center, respectively, where a wide variety of goods and services are sold” and, therefore, the Board gave them little weight). Considering the above, little to no weight is to be given to any of the screenshots to establish that Applicant’s goods are “closely” related to the goods identified in the cited registration. Absent the screenshots, the Examining Attorney has not presented any acceptable evidence to establish this nexus. Thus, Applicant respectfully requests that he withdraw his confusing similarity rejection. Pursuant to the Examining Trademark Attorney's request, Applicant submits a signed Verification Declaration in support of the application. Applicant notes with appreciation that a search of the U.S. Patent and Trademark Office records did not reveal any conflicting pending mark that could bar the registration of Applicant's mark. Applicant thanks the Examining Attorney for his more than helpful comments and suggestions, and it is believed that the application is now in condition to be approved for publication. Prompt and favorable action is respectfully requested. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | Stephen J Strauss |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | BUCHALTER, A PROFESSIONAL CORPORATION |
| STREET | 1000 WILSHIRE BOULEVARD, SUITE 1500 |
| CITY | LOS ANGELES |
| STATE | California |
| POSTAL CODE | 90017-1730 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 213-891-0700 |
| ipdocket@buchalter.com | |
| DOCKET/REFERENCE NUMBER | D2966-5004 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Stephen J Strauss |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | BUCHALTER, A PROFESSIONAL CORPORATION |
| STREET | 1000 WILSHIRE BOULEVARD, SUITE 1500 |
| CITY | LOS ANGELES |
| STATE | California |
| POSTAL CODE | 90017-1730 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 213-891-0700 |
| FAX | 213-896-0400 |
| ipdocket@buchalter.com | |
| DOCKET/REFERENCE NUMBER | D2966-5004 |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | STEPHEN J STRAUSS |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@buchalter.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | sstrauss@buchalter.com; aharvey@buchalter.com |
| DOCKET/REFERENCE NUMBER | D2966-5004 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Stephen J Strauss |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@buchalter.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | sstrauss@buchalter.com; aharvey@buchalter.com |
| DOCKET/REFERENCE NUMBER | D2966-5004 |
| SIGNATURE SECTION | |
| ORIGINAL PDF FILE | HS_381065369-193329286_._726_-_desi.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\884\867\88486726\xml1\ROA0002.JPG |
| SIGNATORY'S NAME | Steven Perkins |
| SIGNATORY'S POSITION | Co-President |
| RESPONSE SIGNATURE | /Stephen J. Strauss/ |
| SIGNATORY'S NAME | Stephen J. Strauss |
| SIGNATORY'S POSITION | Attorney of Record, California Bar Member |
| DATE SIGNED | 03/11/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 11 19:39:00 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 200311193900902427-884867 26-710e427c273e4c6fec0ba5 24f856b1ab223e5fff8d45357 66c664684aa54ecad2-N/A-N/ A-20200311193329286939 |
| 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) |
Responsive to the Office Action dated September 16, 2019, reconsideration of this case is respectfully requested. The Examining Trademark Attorney has preliminarily rejected this application on the ground that Applicant’s mark is confusingly similar to US Registration No. 2728230 for the mark DESI covering “cosmetics, namely, eyeliners, lipstick, nail polish, nail polish remover, and pressed powders” in International Class 3. Applicant respectfully submits that the Examining Attorney has not provided any evidence in support of his claim that Applicant’s Class 9 eyewear goods are similar to the cosmetic products identified in the cited registration.
In comparing goods in a likelihood of confusion analysis, “[t]he issue to be determined . . . is not whether the goods . . . are likely to be confused but rather whether there is a likelihood that purchasers will be misled into the belief that they emanate from a common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). It must be established that the respective goods are related in some manner or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, in light of the similarity of the marks, give rise to the mistaken belief that the services come from or are associated with the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
The Examining Attorney argues that Applicant’s eyewear products are closely related to the cosmetic goods identified in the cited registration because “both are the types of goods offered by the same entities under the same marks.” The only evidence the Examining Attorney submits to support this position are screenshots of eyeglass and cosmetic product pages from the websites of fashion brands Tom Ford, Burberry, Chanel and Gucci. However, these screenshots are woefully insufficient to establish a nexus between eyewear and cosmetics.
The Trademark Trial and Appeal Board has long recognized that third party designer names and house marks (like Tom Ford, Burberry, Chanel and Gucci) have less probative value to show that goods are related because the marks are licensed for a broader range of unrelated goods and services. In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1954 n. 3 (TTAB 1994) (“[S]ince house marks can be used to identify a broad range of products, the inclusion of soccer balls and rackets in the identification is not particularly significant.”); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989) (“In considering this evidence [third-party registrations and exhibits], we have kept in mind defendant’s observation that the link between personal care products and wearing apparel is generally apparent in the category of so-called designer or high-fashion marks, and usually involves the names of well-known designers.”); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988) (“two of the four registrations which were based on use were issued to Saks & Company and to Knott's Berry Farm, owners of a large department store and an amusement or theme center, respectively, where a wide variety of goods and services are sold” and, therefore, the Board gave them little weight).
Considering the above, little to no weight is to be given to any of the screenshots to establish that Applicant’s goods are “closely” related to the goods identified in the cited registration. Absent the screenshots, the Examining Attorney has not presented any acceptable evidence to establish this nexus. Thus, Applicant respectfully requests that he withdraw his confusing similarity rejection.
Pursuant to the Examining Trademark Attorney's request, Applicant submits a signed Verification Declaration in support of the application.
Applicant notes with appreciation that a search of the U.S. Patent and Trademark Office records did not reveal any conflicting pending mark that could bar the registration of Applicant's mark.
Applicant thanks the Examining Attorney for his more than helpful comments and suggestions, and it is believed that the application is now in condition to be approved for publication. Prompt and favorable action is respectfully requested.
