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. 88801318 PINK CRUSH(Standard Characters, see http://uspto.report/TM/88801318/mark.png) has been amended as follows:

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

In response to the Office Action emailed April 1, 2020, reconsideration is respectfully requested in view of the following amendment and remarks.

AMENDMENT

Please amend the recitation of goods to the following:

“indoor non-medicated skin tanning preparations marketed for sale in indoor tanning salons, in International Class 3.”

REMARKS

Likelihood of Confusion

The Office Action preliminarily rejects the present application alleging there is a likelihood of confusion between the present mark and prior registration No. 4,847,883 on the mark PINK CRUSH for “Women’s and girls’ clothing, namely ... dresses.” Applicant submits that the differences between Applicant’s mark and the cited mark are sufficient to show that there is no reasonable likelihood of confusion and requests that the rejection be withdrawn.

Specifically, the goods are not the same or related. As emphasized by the TTAB, “it is the Examining Attorney’s burden to make a prima facie showing that the goods are related.” In re Princeton Tectonics, Inc., 95 USPQ2d, 1509, 1512 (TTAB 2010).

In the present comparison, the goods are not the same. The cited registration is for women’s and girls’ dresses – which are not skin tanning preparations or even cosmetic products in class 3. Instead, the Office Action argues that the goods are “closely related”, asserting that:

The attached Internet evidence from Tom Ford, Dior, and Chanel shows companies providing both tanning preparations as well as dresses. This evidence establishes that the same entity commonly provides the relevant goods and markets them under the same mark.

Applicant respectfully disagrees that such as conclusion is proper in the present case.women’s and girls’ dresses are considered to be substantially different from indoor tanning preparations by most consumers.

When the goods are not the same, the analysis considers the circumstances in which the respective goods are sold and the relevant purchasers. The Office must show, “that circumstances surrounding the marketing of the respective goods would result in relevant purchasers mistakenly believing that the goods originate from the same source when the same mark is used on both types of goods.” In re Princeton Tectonics, 95 USPQ2d at 1511. “The burden is on the Trademark Examining Attorney to prove that there in fact is an overlap or similarity in purchasers and trade channels.” In re Band-it-IDEX, Inc. 2009 TTAB LEXIS 659 *16 (TTAB Oct. 20, 2009).

Addressing this, the Office Action cites three self-tanning products and three pages with dresses cherry-picked from six different websites, namely:

· A “L’Eau Tan Refreshing Self-Tanning Body Mist” from a non-US website at www.chanel.com/en_WW/

· A “Dior Bronze Self Tanning Jelly” from bergdorfgoodman.com

· A “bronzing gel” from neimanmarcus.com

· A page with the caption “Dresses” but no product info from Chanel’s US website at www.chanel.com/us/

· A partial page of women’s dresses from dior.com

· A page of women’s dresses from tomford.com

The Office Action does not indicate how the individual pages were selected, but none of the evidence shows that tanning preparations and women’s and girls’ dresses are naturally related or grouped together. Indeed, the Tom Ford products are chosen from two different websites. The Dior products are similarly chosen from two different websites.

The Office Action also cites two different Chanel websites – the “Dresses” page is from a US website, designated by “/us/” in the URL. In contrast, the “L’Eau Tan Refreshing Self-Tanning Body Mist” page is from a non-US version of the Chanel.com website, designated by “/en_WW/”. Notably, the “L’Eau Tan” product is not listed on Chanel’s US website. Evidence from foreign websites is of limited probative value. TMEP §710.01(b).

To view each of the six respective products on the six respective websites, a consumer, as presumably was done in preparing the office action, must manually select or search for individual product webpages, which are only viewable after using different navigation selections. For instance, to view the Chanel page that says “Dresses”, the consumer must select “FASHION” and then further selecting the sub-category of “Dresses”. To view Chanel’s L’eau Tan product, a consumer must visit the non-US website by identifying the consumer’s location as “Other Locations” and then must manually select the category “SKINCARE,” and then must select the sub-category “Body Care,” followed by the individual product selection.

Even more so, to view the two Tom Ford products, the consumer must navigate to two different websites. Similarly, the Dior products are chosen from two different websites. These separate webpages juxtaposing different categories of goods from different websites do not support a conclusion that the respective goods are related. Carl Walther GmbH v. Herriger, 2017 TTAB LEXIS 356, *25 (TTAB Sept. 1, 2017) (rejecting “separate webpages from mass-market retailer Walmart” as insufficient “To show relatedness,” citing Morgan Creek).

Perhaps more importantly, to advance prosecution Applicant has amended it description of goods to specify that Applicant’s mark is intended to be used for (as amended), “indoor non-medicated skin tanning preparations marketed for sale and use in indoor tanning salons.” Indoor tanning salons are highly specialized businesses typically having a primary emphasis of providing tanning services, i.e., providing ultraviolet tanning beds or booths in which a customer obtains a tan. The sale of indoor tanning preparations is a complimentary product to promote and facilitate these services. Consumers purchasing indoor tanning preparations in indoor tanning salons are purchasing them in that specific environment for use while obtaining indoor tanning services. In contrast, indoor tanning salons is not an ordinary channel of trade for women’s and girls’ dresses. Indeed, most states completely ban or significantly limit people under eighteen from visiting indoor tanning salons.

Neither the cited registration nor the cited evidence are related to products marketed for sale in indoor tanning salons. None of the cited evidence is for indoor tanning preparations or from indoor tanning salons. See, In re Vafiadis, 2007 TTAB LEXIS 344, *5 (TTAB 2007) (nonprecedential) (applicant amended its goods to mineral water distributed in the dental field – “None of the third-party registrations includes ‘mineral water distributed in the dental field.’ Therefore, we do not find the examining attorney’s evidence persuasive on this point.”). Similar to Vafiadis, the cited evidence herein is not persuasive to show that women’s and girls’ dresses and indoor tanning preparations are related.

Further still the respective consumers are sophisticated. Women’s and girls’ dresses as well as indoor tanning services and products are intended to enhance a person’s image and looks. Consumers in these fields pay substantial attention to their appearance. Correspondingly, such consumers take care when purchasing products that affect their appearance. For instance, tanning consumers are typically purchasing indoor tanning products specifically for use in indoor tanning equipment. Such consumers typically receive the input and guidance of a trained indoor tanning consultant. This degree of care and sophistication substantially minimizes if not eliminates any likelihood of consumer confusion.

Similarly considering the market of indoor tanning salons, the TTAB case of In re Coty compared consumers of indoor tanning preparations to consumers for “perfumery, namely, perfume, perfumed soaps, eau de toilette, perfumed body wash, and perfumed shower gel.” The TTAB concluded that the sophistication and care taken by indoor tanning consumers weighed against a finding that there was a likelihood of confusion. In re Coty, 2012 TTAB LEXIS 92 *6-7 (TTAB 2012) (“circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.” … “In this case, we find that this du Pont factor weighs against finding a likelihood of confusion.”) The difference between indoor tanning preparations and women’s and girls’ dresses is even more stark than the difference between indoor tanning preparations and perfumery. Accordingly, in this case there is even less of a potential for any likelihood of confusion.

Conclusion

Applicant respectfully requests withdrawal of the rejection. Applicant accordingly submits that the mark is in condition for publication and allowance, and action towards such is respectfully requested. If there are any questions with regard to the application or this response, the Examining Attorney is invited to telephone the undersigned to expedite this application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Indoor and Outdoor non-medicated skin tanning preparations
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: Indoor and Outdoor non-medicated skin tanning preparations; Indoor non-medicated skin tanning preparations marketed for sale in indoor tanning salonsClass 003 for Indoor non-medicated skin tanning preparations marketed for sale in indoor tanning salons
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.
Correspondence Information (current):
      CHARLES J MEYER
      PRIMARY EMAIL FOR CORRESPONDENCE: cmeyer@uspatent.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketdept@uspatent.com

The docket/reference number is 8183-1867.
Correspondence Information (proposed):
      Charles J Meyer
      PRIMARY EMAIL FOR CORRESPONDENCE: cmeyer@uspatent.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketdept@uspatent.com; danielle@uspatent.com

The docket/reference number is 8183-1867.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Charles J. Meyer/     Date: 04/10/2020
Signatory's Name: Charles J. Meyer
Signatory's Position: Attorney of Record, Indiana Bar Member

Signatory's Phone Number: (317) 634-3456

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:    CHARLES J MEYER
   WOODWARD, EMHARDT, MORIARTY, MCNETT AND HENRY, LLP
   
   111 MONUMENT CIRCLE SUITE 3700
   INDIANAPOLIS, Indiana 46204
Mailing Address:    Charles J Meyer
   WOODWARD, EMHARDT, MORIARTY, MCNETT AND HENRY, LLP
   111 MONUMENT CIRCLE SUITE 3700
   INDIANAPOLIS, Indiana 46204
        
Serial Number: 88801318
Internet Transmission Date: Fri Apr 10 13:31:37 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20200410133137179
447-88801318-71018bc469933c8c9848cee6215
ad79fe4d658d8f6e1a8fc9ed97987a4db2b-N/A-
N/A-20200410132527775082