| 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 | 88653776 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | SO JELLY |
| 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 | Palm Beach Beauté LLC |
| MAILING ADDRESS | 124 North Swinton Ave. |
| CITY | Delray Beach |
| STATE | Florida |
| ZIP/POSTAL CODE | 33444 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Palm Beach Beauté LLC |
| MAILING ADDRESS | 124 North Swinton Ave. |
| CITY | Delray Beach |
| STATE | Florida |
| ZIP/POSTAL CODE | 33444 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| XXXX | |
| ARGUMENT(S) | |
|
Applicant hereby submits this response to the non-final Office Action mailed on January 18, 2020. The Examining Attorney has refused to register Applicant’s word mark SO JELLY (“Applicant’s Mark”) under Section 2(d) of the Trademark Act based on an alleged likelihood of confusion with the mark I’M SO JELLY in U.S. Registration No. 4,708,084 (“‘084 registration”). Applicant disagrees for the following reasons and respectfully requests withdrawal of the Section 2(d) refusal. In considering the similarity of the goods and services offered under two marks, the inquiry must focus on the relation of the goods and services in the minds of consumers. Packard Press, Inc. v. Hewlett-Packard, Inc., 227 F.3d 1352, 1358 (Fed. Cir. 2000). Confusion is not necessarily likely simply because the goods or services can be described as being in the same category or field. See Therma-scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002). Indeed, “[g]oods may fall under the same general product category but operate in distinct niches,” thereby avoiding confusion. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 288 (3d Cir. 2001). In Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988), the Board held that the simultaneous use of XPRESS on information software and X*PRESS for the transmission of information to computers is not likely to cause confusion. Here, Applicant’s goods are in the nature of perfumes and colognes applied to the body and Registrant’s goods are air and room fresheners. As such, consumers are unlikely to believe that body sprays applied to the body and air fresheners are related, despite being in the same international class. Applicant’s proposed goods consist of “Body sprays, namely, perfumes, eau de toilette, and colognes” in class 3. Registrant’s goods consist of “Air fragrancing preparations; Fragrances; Room fragrances” in class 3. Applicant is aware that Registrant is entitled to the full scope of its registrations; equally, however, the interests of the public are ill-served by an overbroad reading of the recitation of goods which extends Registrant’s monopoly beyond the scope of its field. Dictionary evidence shows that jelly can be defined as “a shapeless structureless mass” or used as a slang term for the word jealous. Printouts of the definition of “jelly” from dictionary sources are attached hereto as Composite Exhibit A. Applicant submits that its use of the word jelly is consistent with the latter, where Registrant’s use of the word is consistent with the former. When taken together, I’M SO JELLY and Registrant’s goods—as evidenced by the specimen submitted with the Registrant’s application for registration—will give consumers the impression that the word “jelly” in the mark refers to the gelatinous nature of the room fragrancing “jelly” beads. A copy of the Registrant’s specimen is attached hereto as Exhibit B. Thus, Registrant’s use of the mark is, at best, suggestive of its goods and has a completely different connotation than Applicant’s Mark. Further, the Examining Attorney states that “[t]he only difference between the marks is that the applicant’s mark omits the term ‘I’M’.” January 18, 2020 Office Action (emphasis in original). Although he may accord more or less weight to each element in the mark, the examining attorney may not ignore the element altogether. In re Detroit Athletic Co., 903 F.3d 1297, 1304–5 (Fed. Cir. 2018). In fact, this seemingly insignificant distinction creates a different meaning and overall commercial impression between the marks. See Id. (discussing a vacated ruling where the Board failed to consider whether the disclaimed element “juice” in the mark PEACE LOVE AND JUICE created a distinct commercial impression in the mark as a whole from the registered mark PEACE & LOVE). As discussed above, “I’M SO JELLY” in the ‘084 registration suggests that the goods themselves have “jelly” features. On the other hand, Applicant’s Mark SO JELLY used with body sprays connotes that consumers’ use would cause a third party to be “so jelly” or so jealous. Therefore, Applicant respectfully submits that it is unlikely that confusion would result from Applicant’s use of the mark SO JELLY in connection with Applicant’s proposed goods and registrant’s goods in class 3 and Applicant’s Mark should proceed to registration because of the differences between the proposed goods and Registrant’s goods. Further, the respective goods would not be regarded as related by consumers and would not travel in the same channels of trade. Air fresheners and body sprays are sold in different stores and when sold in a department store, completely different departments. Consumers would not encounter air fresheners and body sprays near each other in any retail environment. Air fresheners are regarded as a household item while body sprays, such as perfumes and colognes, are personal items. Although channels of trade are not specified in the registration, the nature of the respective goods makes clear that they would not travel in the same channels such that consumers would encounter them so as to cause a likelihood of confusion. For the foregoing reasons, withdrawal of the refusal to register is respectfully requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_3810489250-2020072017 0014125253_._Composite_Ex hibit_A_-_Jelly___Diction ary_Definitions.pdf |
| CONVERTED PDF FILE(S) (23 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0003.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0004.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0005.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0006.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0007.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0008.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0009.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0010.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0011.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0012.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0013.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0014.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0015.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0016.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0017.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0018.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0019.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0020.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0021.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0022.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0023.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0024.JPG | |
| ORIGINAL PDF FILE | evi_3810489250-2020072017 0014125253_._Exhibit_B_-_ Specimen_4708084.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0025.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0026.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0027.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\886\537\88653776\xml1\ ROA0028.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Composite Exhibit A containing dictionary definitions and Exhibit B - Registrant's specimen |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | JOSEPH W. BAIN |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ptomail@shutts.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 35987.0009 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Joseph W. Bain |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ptomail@shutts.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | jtillman@shutts.com |
| DOCKET/REFERENCE NUMBER | 35987.0009 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jodi-Ann Tillman/ |
| SIGNATORY'S NAME | Jodi-Ann Tillman |
| SIGNATORY'S POSITION | Attorney, Shutts & Bowen LLP, Florida Bar member |
| SIGNATORY'S PHONE NUMBER | 561-671-5822 |
| DATE SIGNED | 07/20/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 20 17:14:39 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0200720171439365235-88653 776-740e276f6fad8305d8fe7 c983030e35a65e8a3a1c4bb8a 125638339aced21e7-N/A-N/A -20200720170014125253 |
| 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) |
Applicant hereby submits this response to the non-final Office Action mailed on January 18, 2020. The Examining Attorney has refused to register Applicant’s word mark SO JELLY (“Applicant’s Mark”) under Section 2(d) of the Trademark Act based on an alleged likelihood of confusion with the mark I’M SO JELLY in U.S. Registration No. 4,708,084 (“‘084 registration”). Applicant disagrees for the following reasons and respectfully requests withdrawal of the Section 2(d) refusal.
In considering the similarity of the goods and services offered under two marks, the inquiry must focus on the relation of the goods and services in the minds of consumers. Packard Press, Inc. v. Hewlett-Packard, Inc., 227 F.3d 1352, 1358 (Fed. Cir. 2000). Confusion is not necessarily likely simply because the goods or services can be described as being in the same category or field. See Therma-scan, Inc. v. Thermoscan, Inc., 295 F.3d 623 (6th Cir. 2002). Indeed, “[g]oods may fall under the same general product category but operate in distinct niches,” thereby avoiding confusion. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 288 (3d Cir. 2001). In Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988), the Board held that the simultaneous use of XPRESS on information software and X*PRESS for the transmission of information to computers is not likely to cause confusion. Here, Applicant’s goods are in the nature of perfumes and colognes applied to the body and Registrant’s goods are air and room fresheners. As such, consumers are unlikely to believe that body sprays applied to the body and air fresheners are related, despite being in the same international class.
Applicant’s proposed goods consist of “Body sprays, namely, perfumes, eau de toilette, and colognes” in class 3. Registrant’s goods consist of “Air fragrancing preparations; Fragrances; Room fragrances” in class 3. Applicant is aware that Registrant is entitled to the full scope of its registrations; equally, however, the interests of the public are ill-served by an overbroad reading of the recitation of goods which extends Registrant’s monopoly beyond the scope of its field. Dictionary evidence shows that jelly can be defined as “a shapeless structureless mass” or used as a slang term for the word jealous. Printouts of the definition of “jelly” from dictionary sources are attached hereto as Composite Exhibit A. Applicant submits that its use of the word jelly is consistent with the latter, where Registrant’s use of the word is consistent with the former. When taken together, I’M SO JELLY and Registrant’s goods—as evidenced by the specimen submitted with the Registrant’s application for registration—will give consumers the impression that the word “jelly” in the mark refers to the gelatinous nature of the room fragrancing “jelly” beads. A copy of the Registrant’s specimen is attached hereto as Exhibit B. Thus, Registrant’s use of the mark is, at best, suggestive of its goods and has a completely different connotation than Applicant’s Mark.
Further, the Examining Attorney states that “[t]he only difference between the marks is that the applicant’s mark omits the term ‘I’M’.” January 18, 2020 Office Action (emphasis in original). Although he may accord more or less weight to each element in the mark, the examining attorney may not ignore the element altogether. In re Detroit Athletic Co., 903 F.3d 1297, 1304–5 (Fed. Cir. 2018). In fact, this seemingly insignificant distinction creates a different meaning and overall commercial impression between the marks. See Id. (discussing a vacated ruling where the Board failed to consider whether the disclaimed element “juice” in the mark PEACE LOVE AND JUICE created a distinct commercial impression in the mark as a whole from the registered mark PEACE & LOVE). As discussed above, “I’M SO JELLY” in the ‘084 registration suggests that the goods themselves have “jelly” features. On the other hand, Applicant’s Mark SO JELLY used with body sprays connotes that consumers’ use would cause a third party to be “so jelly” or so jealous. Therefore, Applicant respectfully submits that it is unlikely that confusion would result from Applicant’s use of the mark SO JELLY in connection with Applicant’s proposed goods and registrant’s goods in class 3 and Applicant’s Mark should proceed to registration because of the differences between the proposed goods and Registrant’s goods.
Further, the respective goods would not be regarded as related by consumers and would not travel in the same channels of trade. Air fresheners and body sprays are sold in different stores and when sold in a department store, completely different departments. Consumers would not encounter air fresheners and body sprays near each other in any retail environment. Air fresheners are regarded as a household item while body sprays, such as perfumes and colognes, are personal items. Although channels of trade are not specified in the registration, the nature of the respective goods makes clear that they would not travel in the same channels such that consumers would encounter them so as to cause a likelihood of confusion.
For the foregoing reasons, withdrawal of the refusal to register is respectfully requested.
