NOTE TO THE FILE
SERIAL NUMBER: 90081500
DATE: 03/29/2021
NAME: thussain
NOTE:
From: Sam Sokhansanj <sam@attorneysam.com>
Sent: Friday, March 19, 2021 9:28 AM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>
Subject: Re: U.S. Trademark Application Serial No. 90081500 - BISON - N/A
Ms. Hussain,
Thank you for your detailed response and analysis. While we respectfully disagree, I have a better understanding of your position which helps narrow the arguments for potential appeal.
Thank You,
Sam Sokhansanj
Registered Patent Attorney
JD | BSME | MSBioE | MSEE
2101 Cedar Springs Rd.
Suite 1050
Dallas, TX 75201
Office: 214.988.5454
Fax: 214.988.5450
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On Mar 17, 2021, at 5:18 AM, Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV> wrote:
Mr. Sokhansanj,
As we discussed yesterday, I cannot withdraw the Section 2(d) refusal because the marks, compared in their entireties, are confusingly similar and the goods are closely related. While it is true that a disclaimer does not remove the term from the analysis, it is also true that disclaimed matter that is descriptive of or generic for a party’s goods (such as “BODY BUTTER” in registrant’s mark) is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
As I pointed out in our conversation, registrant’s mark is not BISON BUTTER. Registrant’s mark is BISON BODY BUTTER. Applicant has taken registrant’s mark and merely deleted the descriptive wording. The term BODY BUTTER is highly descriptive for cosmetic products which is why it was disclaimed in the registration. For your edification, please visit these website to learn more about “body butter” and how it has a descriptive, and thus less source-identifying, meaning for cosmetic goods:
http://www.thebodyshop.com/en-us/tips-and-advice/what-is-body-butter/e/e00057
http://www.jergens.com/en-us/blog/healthy-skin/what-is-body-butter/
http://www.magical-tree.com/blogs/our-story/11-benefits-of-using-natural-body-butters
http://www.leaf.tv/articles/how-to-use-body-butter/
http://www.kiehls.com/skincare-advice/benefits-of-body-butter-vs-body-lotion.html
http://www.modernvintageville.com/understanding-body-butters-and-their-benefits-for-the-skin/
http://pronounceskincare.com/understanding-body-butters/
http://oliviasheritage.com/blogs/news/benefits-of-body-butter
With respect to the type of purchaser, please note that neither party has limited its goods to any particular consumer. You cannot limit registrant’s goods to “only females”. Registrant’s goods are available for purchase by anyone, including men who grow beards. The case law and evidence of record confirm that the goods are closely related. Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Furthermore, as explained previously, the compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). The evidence of record confirms that these goods are definitely related. In fact, the first Office Action demonstrated that “beard and body butter” can be used on beards and the body.
Ultimately, the issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
For the reasons stated in the Office Actions and above, the refusal is sound and your remarks do not overcome the refusal.
/Ms. Tasneem Hussain/
From: Sam Sokhansanj <sam@attorneysam.com>
Sent: Tuesday, March 16, 2021 5:36 PM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>
Subject: Re: U.S. Trademark Application Serial No. 90081500 - BISON - N/A
Ms. Hussain,
To follow up on our call today, please see my proposed remarks below. If you believe that these remarks overcome the Section 2(d) refusal, then please let me know and we can file a request for reconsideration and incorporate these remarks to make them of record to have the application approved for publication. Thank you in advance.
************************************************
Standard of law
A disclaimer of certain terms does not remove those disclaimed terms from a likelihood of confusion analysis of the entire mark. See TMEP 1213.10. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991).
Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Vi terra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983).
Argument
The mark BISON BODY BUTTER must be analyzed as a whole under Section 2(d) analysis—irrespective of the terms BODY and BUTTER being disclaimed.
The Merriam-Webster dictionary defines “Butter” as the following (http://www.merriam-webster.com/dictionary/butter):
"a solid emulsion of fat globules, air, and water made by churning milk or cream andused as food.” (Emphasis added.)
There is no formal or legal definition of “Butter” being anything other than a food or an edible substance. In other words, “Butter” (on its own) is not a common term that is used to refer to lotions, creams, moisturizers, or cosmetic products. Whether the meaning of the term “Butter” changes by combining that with the word “Body” is subjective or ambiguous at best. Here, the Registrant's mark is not BISON BODY LOTION or BISON BODY CREAM. Its mark is for BISON BODY BUTTER—with the BUTTER suggesting a food. Simply put, the term BUTTER can be a dominant feature of the entire mark, irrespective of BUTTER being disclaimed. Per the case law, disclaimed words can still operate as a dominant feature of a mark. Here, the addition of the terms BODY BUTTER clearly distinguishes the mark from the applied-for-mark.
In addition, as you know, Class 003 is very broad. As to the other cited third party marks in the second Office Action, many of them cite items such as “cologne”, “rose water”, “bar soap”, and several other goods that are unrelated to lotions, oils, and creams. In other words, just because a third party may list beard care goods in addition to body lotions, that in itself cannot provide substantive proof of confusion given the very broad scope of Class 003.
Further, the sophistication of the purchaser is not at issue here. Whether the intended ordinary consumer is a female or male is not a matter of sophistication or knowledge of a particular field. Average healthy females simply cannot biologically grow a beard and are not the intended purchaser (nor would they have interest in purchasing) the applied-for-mark’s goods, which weighs in favor of finding no likelihood of confusion. As a simple analogy, this would be like a male purchaser being allegedly confused with purchasing goods intended for feminine hygiene. Under any objective analysis, it simply can’t happen.
Here, the mark BISON BODY BUTTER, as a whole, is easily distinguishable from that of BISON for beard care related goods, where the ordinary intended purchaser is a male consumer with a beard. Applicant respectfully requests the Examiner to withdraw the Section 2(d) rejection.
Thank You,
Sam Sokhansanj
Registered Patent Attorney
JD | BSME | MSBioE | MSEE
2101 Cedar Springs Rd.
Suite 1050
Dallas, TX 75201
Office: 214.988.5454
Fax: 214.988.5450