From: Gaynor, Barbara
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`Sent: 11/7/2017 6:56:56 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86454618 - 6000-0372 - EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 86454618.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 86454618
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`MARK:
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`*86454618*
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`CORRESPONDENT ADDRESS:
` JEFFREY E SCHILLER
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`GENERAL TRADEMARK INFORMATION:
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` GROGAN TUCCILLO & VANDERLEEDEN LLP
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`http://www.uspto.gov/trademarks/index.jsp
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` 1350 MAIN STREET STE 508
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` SPRINGFIELD, MA 01103
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`APPLICANT: W.F. Young, Inc.
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 6000-0372
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`CORRESPONDENT E-MAIL ADDRESS:
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` docket@gtv-ip.com
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`The applicant has appealed the examining attorney’s final refusal to register its design mark,
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`which consists solely of a blank ribbon-shaped banner. Registration was refused under (1) Trademark
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`Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with
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`the identified goods, so resembles the marks in U.S. Registration Nos. 4653735 and 4724070 as to be
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`likely to cause confusion, to cause mistake, or to deceive; (2) Trademark Act Sections 1, 2, and 45, 15
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`U.S.C. §§1051-1052, 1127, because the applicant’s mark, as used on the specimens of record, fails to
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`function as a trademark because it is merely a background design that functions as part of a composite
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`mark that incorporates additional wording; and (3) Trademark Act Sections 1 and 45, 15 U.S.C. §§1051,
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`1127, because the International Class 21 specimen of record does not show the applicant’s mark in use
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`in commerce in connection with any of the International Class 21 goods specified in the amendment to
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`allege use.1
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`FACTS
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`The applicant has applied to register a design mark consisting solely of a blank ribbon-shaped
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`banner for “Non-medicated cleaning preparations for livestock, horses and domestic animals, namely,
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`shampoos, hair polish, detanglers, conditioners, fragrance sprays, stain removers; coat, mane and tail
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`whiteners; mane and tail cleaners; non-medicated hoof care products namely conditioners, moisturizing
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`creams and polish” in International Class 3; “Veterinary preparations for livestock, horses and domestic
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`animals, namely, liniments, antimicrobials for dermatologic use, medicated shampoos, topical analgesics
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`and anti-inflammatory creams, ointments and sprays; animal feed supplements and feed additives for
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`use as dietary supplements and animal health supplements; medicated hoof ointments; hoof packing for
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`reducing hoof heat, pain, swelling and for killing and preventing growth of bacterial and fungal
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`infections; insecticides, insect repellents and flea and tick control products in the form of liquids, sprays,
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`creams, shampoos, powders, spot-ons and dips” in International Class 5; “Bag netting for covering eyes
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`and head for livestock and horses” in International Class 18; and “Sponges, combs and brushes;
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`1 The specimen refusal under Trademark Act Sections 1 and 45 applies only to International Class 21.
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`shedding combs and brushes; cleaning mitts for grooming livestock horses and domestic animals” in
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`International Class 21.2
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`Registration was refused because the applicant’s mark is confusingly similar to U.S. Registration
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`Nos. 4653735 and 4724070. U.S. Registration No. 4653735 consists of the stylized wording “HEAD TO
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`TAIL” and the design of a blank ribbon-like banner for “Dietary supplements for pets” in International
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`Class 5. U.S. Registration No. 4724070 consists of the stylized wording “BIOMANE” appearing in the
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`center of a ribbon-shaped banner for “Topical body lotion” in International Class 3 and “Veterinary
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`preparations in the form of equine pellets for the thickening of horse manes” in International Class 5.
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`Registration also was refused under Trademark Act Sections 1, 2, and 45 because the applicant’s
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`mark, as used on the specimens of record, is merely a background design that functions as part of a
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`composite mark that incorporates additional wording. As such, it does not function separately as a
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`trademark.
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`With respect to International Class 21 only, registration was refused under Trademark Act
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`Sections 1 and 45 because the specimen of record does not show the applicant's mark in use in
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`commerce in connection with any of the International Class 21 goods specified in the amendment to
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`allege use.
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`On April 9, 2016, all of the foregoing refusals were made final. On June 1, 2017, a subsequent
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`final Office action was issued which maintained the finality of the Section 2(d) likelihood of confusion
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`refusal, the Sections 1, 2, and 45 failure to function as trademark refusal, and the Sections 1 and 45
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`specimen refusal. The issues to be decided on appear are (1) whether the applicant’s mark is likely to
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`2 U.S. Application Serial No. 86/454618, filed on November 14, 2014, based on applicant’s bona fide intention to use
`the mark in commerce under Trademark Act §1(b), 15 U.S.C. §1051(b). On September 2, 2015, the applicant filed
`an amendment to allege use (AAU), which alleges a date of first use anywhere and a date of first use in commerce of
`January 9, 2014 for all goods and all international classes.
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`cause confusion with the U.S. Registration Nos. 4653735 and 4724070; (2) whether the applicant’s mark
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`is merely a background design that functions as part of a composite mark that incorporates additional
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`wording; and (3) whether the International Class 21 specimen of record shows the use of the applicant’s
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`mark in commerce in connection with any of the International Class 21 goods specified in the
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`amendment to allege use.
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`I.
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`ARGUMENTS
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`THE APPLICANT’S MARK IS LIKELY TO CAUSE CONFUSION WITH U.S. REGISTRATION NOS.
`4653735 AND 4724070 UNDER SECTION 2(d) OF THE TRADEMARK ACT.
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a
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`registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of
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`the goods of applicant and registrants. See 15 U.S.C. §1052(d). Determining likelihood of confusion is
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`made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co.,
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`476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). In re i.am.symbolic, llc, 866 F.3d 1315, 1322,
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`123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to
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`every case, and only factors of significance to the particular mark need be considered.” Coach Servs.,
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`Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re
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`Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its
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`analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or
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`services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v.
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`Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
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`A.
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`U.S. Registration No. 4653735
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`The Applicant’s and the Registrant’s Marks are Similar in Appearance
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`The applicant’s mark is a design mark consisting solely of a blank ribbon-shaped banner. The
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`mark in U.S. Registration No. 4653735 consists of the design of a blank ribbon-like banner below the
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`stylized wording “HEAD TO TAIL.”
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`Marks are compared in their entireties for similarities in appearance, sound, connotation, and
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`commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110
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`USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
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`Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). “Similarity in any one of
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`these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810,
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`1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)).
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`In this case, the marks are similar in appearance. The applicant’s mark consists solely of a blank
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`ribbon-like banner. The registrant’s mark consists of a blank ribbon-like banner below the stylized
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`wording “HEAD TO TAIL.”
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`The applicant argues that:
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`[I]n reaching a conclusion on the issue of confusion, there is nothing improper in giving
`more or less weight has been given to a particular feature of a mark provided the
`ultimate conclusion rests on consideration of the marks in their entireties. However,
`the entire mark, which means each and every components of the mark, must be
`considered, even if some components are given more weight while some components
`are given less weight. If a component can be given no weight at all, it is discounted
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`from the consideration, and therefore, the trademark is indeed “dissected”. In the
`outstanding Office Action, by giving no weight to the word “Head to Tail”, the ‘735 is
`indeed dissected.
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`(Applicant’s Brief, p. 9) [emphasis in original].
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`The fact that one feature of a mark may be more dominant than other features of the mark is
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`just one factor to consider when determining similarity of marks. That determination does not
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`circumvent the first step of the analysis – the examining attorney’s determination that the marks are
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`highly similar when compared in their entireties:
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`[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only
`part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the
`issue of confusion, there is nothing improper in stating that, for rational reasons, more or
`less weight has been given to a particular feature of a mark, provided the ultimate
`conclusion rests on consideration of the marks in their entireties.
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`In re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985).
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`The marks have not been dissected. The applicant’s mark consists solely of the design of a blank
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`ribbon-like banner, so it is impossible to dissect the applicant’s mark. The wording “HEAD TO TAIL” in
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`the registrant’s mark has been considered but given less weight in the likelihood of confusion analysis
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`because the wording is clearly separable from the ribbon design.
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`The ribbon designs have been given greater weight in the likelihood of confusion analysis
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`because it is the design feature that the marks share. While the shapes of the ribbons are not identical,
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`they are similar. Both ribbons are horizontal, are generally rectangular in shape, are folded over toward
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`the ends, have notched ends, and neither ribbon contains any wording. When the marks at issue are
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`both design marks, similarity of the marks is determined primarily on the basis of visual similarity. See,
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`e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9
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`(C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)).
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`However, a side-by-side comparison is not the test. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller,
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`477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973). When comparing design marks, the focus is on
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`the overall commercial impression conveyed by such marks, not on specific differences. Id.
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`The applicant’s mark consists of, and the registrant’s mark contains, a highly similar design
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`element such that the marks are similar in appearance. The marks are sufficiently similar under Section
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`2(d) of the Trademark Act such that a likelihood of confusion exists between the applicant’s mark and
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`the registrant’s mark.
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`The Applicant’s Goods and the Registrant’s Goods are Presumed to be Identical in Part
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`The applicant’s goods are “Non-medicated cleaning preparations for livestock, horses and
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`domestic animals, namely, shampoos, hair polish, detanglers, conditioners, fragrance sprays, stain
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`removers; coat, mane and tail whiteners; mane and tail cleaners; non-medicated hoof care products
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`namely conditioners, moisturizing creams and polish” in International Class 3; “Veterinary preparations
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`for livestock, horses and domestic animals, namely, liniments, antimicrobials for dermatologic use,
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`medicated shampoos, topical analgesics and anti-inflammatory creams, ointments and sprays; animal
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`feed supplements and feed additives for use as dietary supplements and animal health supplements;
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`medicated hoof ointments; hoof packing for reducing hoof heat, pain, swelling and for killing and
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`preventing growth of bacterial and fungal infections; insecticides, insect repellents and flea and tick
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`control products in the form of liquids, sprays, creams, shampoos, powders, spot-ons and dips” in
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`International Class 5; “Bag netting for covering eyes and head for livestock and horses” in International
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`Class 18; and “Sponges, combs and brushes; shedding combs and brushes; cleaning mitts for grooming
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`livestock horses and domestic animals” in International Class 21. The goods in U.S. Registration No.
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`4653735 are “Dietary supplements for pets.”
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`Determining likelihood of confusion is based on the descriptions of the goods in the application
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`and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion
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`Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v.
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`Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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`The registration uses broad wording to describe “Dietary supplements for pets,” which
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`presumably encompasses all goods of the type described, including applicant’s more specific “animal
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`feed supplements and feed additives for use as dietary supplements and animal health supplements.”
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`See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
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`The applicant presented no arguments in its brief as to the relatedness of its goods and the
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`registrant’s goods. As explained above, the applicant and the registrant both manufacture/sell dietary
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`supplements for animals. Accordingly, the applicant’s and the registrant’s goods are sufficiently related
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`under Section 2(d) of the Trademark Act such that they could be encountered by the same consumers
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`under circumstances that could give rise to the mistaken belief that the goods come from a common
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`source.
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`B.
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`U.S. Registration No. 4724070
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`The Applicant’s and the Registrant’s Marks are Similar in Appearance
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`The applicant’s mark is a design mark consisting solely of a blank ribbon-shaped banner. The
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`mark in U.S. Registration No. 4724070 consists of the stylized wording “BIOMANE” appearing in the
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`center of a ribbon-shaped banner.
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`As explained above with respect to U.S. Registration No. 4653735, marks are compared in their
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`entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion
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`Capital Partners, supra. “Similarity in any one of these elements may be sufficient to find the marks
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`confusingly similar.” In re Davia, supra.
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`In this case, the marks are similar in appearance. The registrant’s mark consists of the stylized
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`wording “BIOMANE” appearing in the center of a ribbon-shaped banner. The applicant’s mark consists
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`solely of a blank ribbon-shaped banner that is highly similar in appearance to the ribbon-shaped banner
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`in the registrant’s mark.
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`The applicant argues that:
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`The ‘070 mark is composed of the phrase “BioMane” crossing a background design of a
`ribbon having gradual shading color. In the Office Action, the Examining Attorney has
`dissected the ‘070 mark, and focused entirely on the ribbon as the background design in
`the ‘070, while giving no weight to the word portion “Biomane”, because the ribbon
`shape banner is the only similarity between the marks. “Biomane” of the ‘070 mark is
`centered in the drawing and is in large letters, and from a visual standpoint alone
`“Biomane” completely dominates the impression the mark makes on a viewer. Further
`considering that the product offered under this mark is a veterinary preparation for a
`horse mane, and the deliberate inclusion of the term “mane” in the phrase “Biomane”,
`Applicant respectfully submits that the ‘070 mark is in essence “Biomane”, and that the
`background ribbon is mere “window dressing” that leaves little if any overall lasting
`impression on the consumer.
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`(Applicant’s Brief, pp. 6-7) [emphasis in original].
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`The marks have not been dissected. The applicant’s mark consists solely of the design of a blank
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`ribbon-like banner, so it is impossible to dissect the applicant’s mark. The wording “BIOMANE” in the
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`registrant’s mark has been considered but given less weight in the likelihood of confusion analysis
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`because the wording does not detract from the similarities of the ribbon designs in both marks.
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`The ribbon designs have been given greater weight in the likelihood of confusion analysis
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`because it is the feature that the marks share. While the shapes of the ribbons are not identical, they
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`are highly similar. Both ribbons are horizontal, are generally rectangular in shape, are folded over
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`toward the ends, and have notched ends.
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`The applicant argues that:
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`In addition, it is noted that the ribbon in the ‘070 mark incorporates a background
`having variable shadings without a solid border line. Also, the ribbon in ‘070 mark is
`higher on the right end and lower on the left end of the ribbon.
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`In stark contrast to the ‘070 mark, Applicant’s mark is a design of a ribbon and contains
`no wording at all. Moreover, solid lines are used for delineating the border of the
`ribbon, and the design of the ribbon contains no variable shading on the background.
`In addition, with a lower right end and a higher left end, the direction of the ribbon in
`Applicants’ mark is opposite the ribbon in ‘070 mark.
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`(Applicant’s Brief, p. 7).
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`When comparing marks, the test is not whether the marks can be distinguished in a side-by-side
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`comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial
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`impression that confusion as to the source of the offered under the respective marks is likely to result.
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`Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435,
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`1440 (Fed. Cir. 2012). The proper focus is on the recollection of the average purchaser, who retains a
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`general rather than specific impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d at 1960
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`(citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d
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`1353 (Fed. Cir. 1992). In this case, the design elements of the applicant’s and the registrant’s marks are
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`so similar that consumers are likely to believe that the goods sold under the respective marks come
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`from the same source. In particular, consumers are likely to believe that the applicant’s blank ribbon-
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`like banner is the “carrier” for the names of the registrant’s specific product lines.
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`The applicant’s mark consists of, and the registrant’s mark contains, a highly similar design
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`element such that the marks are similar in appearance. The marks are sufficiently similar under Section
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`2(d) of the Trademark Act such that a likelihood of confusion exists between the applicant’s mark and
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`the registrant’s mark.
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`The Applicant’s Goods and the Registrant’s Goods are Presumed to be Identical in Part
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`The applicant’s goods are “Non-medicated cleaning preparations for livestock, horses and
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`domestic animals, namely, shampoos, hair polish, detanglers, conditioners, fragrance sprays, stain
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`removers; coat, mane and tail whiteners; mane and tail cleaners; non-medicated hoof care products
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`namely conditioners, moisturizing creams and polish” in International Class 3; “Veterinary preparations
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`for livestock, horses and domestic animals, namely, liniments, antimicrobials for dermatologic use,
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`medicated shampoos, topical analgesics and anti-inflammatory creams, ointments and sprays; animal
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`feed supplements and feed additives for use as dietary supplements and animal health supplements;
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`medicated hoof ointments; hoof packing for reducing hoof heat, pain, swelling and for killing and
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`preventing growth of bacterial and fungal infections; insecticides, insect repellents and flea and tick
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`control products in the form of liquids, sprays, creams, shampoos, powders, spot-ons and dips” in
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`International Class 5; “Bag netting for covering eyes and head for livestock and horses” in International
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`Class 18; and “Sponges, combs and brushes; shedding combs and brushes; cleaning mitts for grooming
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`livestock horses and domestic animals” in International Class 21. The goods in U.S. Registration No.
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`4724070 are “Topical body lotion” in International Class 3 and “Veterinary preparations in the form of
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`equine pellets for the thickening of horse manes” in International Class 5.
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`Determining likelihood of confusion is based on the descriptions of the goods in the application
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`and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion
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`Capital LLP, supra. Additionally, absent restrictions in an application and/or registration, the identified
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`goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re
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`Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co.
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`v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
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`In this case, the International Class 3 identification set forth in the registration has no
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`restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that
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`these goods travel in all normal channels of trade, and are available to the same class of purchasers.
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`Further, both the application and registration use broad wording to describe the goods and this wording
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`is presumed to encompass all goods of the type described, including those in applicant’s and registrant’s
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`more narrow identifications. Here it is presumed that the registrant’s “Topical body lotion” includes the
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`applicant’s more specific “Non-medicated cleaning preparations for livestock, horses and domestic
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`animals, namely, . . . hair polish, . . . conditioners, . . . coat, mane and tail whiteners; mane and tail
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`cleaners; non-medicated hoof care products namely conditioners, moisturizing creams and polish.” It
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`also is presumed that the applicant’s “animal feed supplements and feed additives for use as dietary
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`supplements and animal health supplements” include the registrant’s more specific “Veterinary
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`preparations in the form of equine pellets for the thickening of horse manes.”
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`The applicant presented no arguments in its brief as to the relatedness of its goods and the
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`registrant’s goods. As explained above, the applicant’s and the registrant’s goods are presumed to be
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`identical in part. Accordingly, the applicant’s and the registrant’s goods are sufficiently related under
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`Section 2(d) of the Trademark Act such that they could be encountered by the same consumers under
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`circumstances that could give rise to the mistaken belief that the goods come from a common source.
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`II.
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`THE APPLICANT'S MARK IS MERELY A BACKGROUND DESIGN THAT FUNCTIONS AS PART OF A
`COMPOSITE MARK THAT INCORPORATES ADDITIONAL WORDING AND THUS FAILS TO
`FUNCTION AS A TRADEMARK UNDER SECTIONS 1, 2, AND 45 OF THE TRADEMARK ACT.
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`The applicant’s mark, as used on the specimens of record, is merely a background design that
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`functions as part of a composite mark that incorporates additional wording. As such, the background
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`design does not function separately as a mark. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-
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`1052, 1127; see In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998).
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`A background design that is not sufficiently distinctive or unique so as to create a commercial
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`impression separate and apart from the word and/or design mark in conjunction with which it is used is
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`not regarded as an indicator of origin. See In re Benetton Grp. S.p.A., 48 USPQ2d at 1215-16.
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`
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`In this case, the applicant has applied to register the design of a blank ribbon-shaped banner.
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`The specimens all show the mark as the word “ABSORBINE” in the center of a ribbon-shaped banner.
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`The ribbon-shaped banner is not sufficiently distinctive or unique so as to create a separate commercial
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`impression apart from the word “ABSORBINE.”
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`
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`The applicant argues that:
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`
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`Although it is true that the ribbon shaped design is used in association with an
`additional word “Absorbine” for one of the Applicant’s product series, Applicant
`submits that the mark of the ribbon shaped design has separate trademark significance
`even if it is frequently used in association with the word “Absorbine”. Indeed, in the
`rejection under 2(d), the Examining Attorney has given considerable, if not full, weight
`to the ribbon design while putting limited, if not none, weight to the word component
`of the marks.
`
`
`
`For the instant application, Applicant distinguish[es] its various series of products from
`those of its competitors by using the ribbon designed banner. Therefore, the mark shall
`not be considered as merely a background design and shall be regarded as a trademark
`functions independently for distinguishing Applicant’s products.
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`(Applicant’s Brief, pp. 10-11).
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`
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`
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`The Section 2(d) likelihood of confusion refusal is based, in part, on the applied-for mark. The
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`Sections 1, 2, and 45 failure to function as a trademark refusal is based solely on the specimens, which
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`show how the applicant is actually using the applied-for mark in commerce. Comparing the bases for
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`the two refusals is like comparing apples and oranges; there is no similarity between the refusals.
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`
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`Moreover, the applicant’s intentions as to future uses of the applied-for mark are immaterial to
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`the refusal. The failure to function as a trademark refusal is based solely on the applicant’s use of the
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`applied-for mark on the specimens of record. In this case, the specimens of record all show that the
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`mark consists of the word “ABSORBINE” printed across the center of a ribbon-shaped banner. The
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`applied-for mark, the ribbon-shaped banner, functions solely as a background design and does not
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`create a distinct or unique commercial impression apart from the word “ABSORBINE.”
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`

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`III.
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`
`
`THE INTERNATIONAL CLASS 21 SPECIMEN DOES NOT SHOW THE USE OF THE APPLICANT'S
`MARK IN COMMERCE IN CONNECTION WITH ANY OF THE INTERNATIONAL CLASS 21 GOODS
`SPECIFIED IN THE AMENDMENT TO ALLEGE USE.
`
`An application based on Trademark Act Section 1(a) must include a specimen showing the
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`applied-for mark in use in commerce for each international class of goods identified in the amendment
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`to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a).
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`
`
`In this case, the International Class 21 substitute specimen submitted on April 28, 2017 does not
`
`show the applied-for mark in use in commerce in connection with any of the International Class 21
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`goods specified in the amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051,
`
`1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB
`
`2017).
`
`
`
`The applicant’s International Class 21 goods as identified in the amendment to allege use are
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`“Sponges, combs and brushes; shedding combs and brushes; cleaning mitts for grooming livestock
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`horses and domestic animals.” The International Class 21 substitute specimen submitted on April 28,
`
`2017 shows the use of the applied-for mark on packaging for a deodorizing bath pouf “infused” with
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`soap beads. Because the pouf contains soap beads, these goods are classified in International Class 3
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`with other “soap” products, not International Class 21. Thus, the International Class 21 substitute
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`specimen does not show the use of the applied-for mark on any of the International Class 21 goods
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`identified in the amendment to allege use.
`
`The applicant argues that:
`
`
`
`
`
`W.F. Yong [sic] [applicant] submitted in International Class 021, Current Identification:
`Sponges, combs and brushes; shedding combs and brushes; cleaning mitts for grooming
`
`

`

`livestock horses and domestic animals. The pad pictured in the specimen is for
`sanitizing livestock horses and domestic animals. It is akin to the sponges, brushes,
`cleaning mitts, etc. identified in the application, and is plainly within Class 21. The fact
`that there are soap beads within the product does not turn the entire product into one
`which firs [sic] within Class 3; that focuses on only one element to the exclusion of
`others.
`
`
`
`(Applicant’s Brief, p. 11).
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`
`
`
`
`The applicant’s analysis is incorrect. For example, “Cleaning cloths” are classified in
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`International Class 21; however, “Cloths impregnated with a detergent for cleaning” are considered
`
`entirely different goods that are classified in International Class 3 because detergent soaps are classified
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`in International Class 3.
`
`
`
`The specimen submitted for International Class 21 shows that the bath poufs are “infused” with
`
`soap beads, and thus shows the use of the mark on goods that are classified in International Class 3 and
`
`not on any of the goods currently set forth in International Class 21. Thus, the International Class 21
`
`specimen does not show the use of the applied-for mark in commerce on any of the International Class
`
`21 goods specified in the amendment to allege use.
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`
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`
`
`CONCLUSION
`
`For the foregoing reasons, the examining attorney respectfully requests that the Section 2(d)
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`likelihood of confusion refusal, the Sections 1, 2, and 45 failure to function as trademark refusal, and, as
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`to International Class 21 only, the Sections 1 and 45 specimen refusal all be affirmed.
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`
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`Respectfully submitted,
`
`/Barbara A. Gaynor/
`
`Barbara A. Gaynor
`
`Trademark Examining Attorney
`
`Law Office 115
`
`(571) 272-9164
`
`Barbara.gaynor@uspto.gov
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`
`
`
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`
`
`Daniel Brody
`
`Managing Attorney
`
`Law Office 115
`
`