Merchant & Gould
`An Intellectual Property Law Firm
`
`Direct Contact
`
`6 123364616
`jc1i{ford@merchant-gould.com
`
`In re Application of: Cosmetic Warriors Limited
`
`Mark: KARMA
`Serial No.: 78/629048
`Examining Atty: Colleen Kearney
`Filing Date: May 12, 2005
`
`PO. Box 2910
`
`Minneapolis, Minnesota
`
`TEL612'332‘53°o
`FAX 612.332.9081
`
`wwwmerchant-gou1d.com
`
`A Professional Corporation
`
`DocketNol: 14816.10-US-01
`Due Date: June 23,2006
`Law Office: 113
`
`CERTIFICATE UNDER 37 CFR 2.197: The undersigned hereby certifies that this Transmittal Letter and the paper, as
`described herein, are being deposited in the United States Postal Service, as first class mail in an envelope addressed to:
`Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, on JuneQ 2006.
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Dear Commissioner:
`
`We are transmitting herewith the attached:
`
`Transmittal Sheet in duplicate containing Certificate of Mailing under 37 C.F.R. 2.197.
`Return postcard.
`Amendment to Office Action dated December 23, 2005.
`Other: Specimen and signed Declaration in support thereof.
`
`Please charge any additional fees or credit overpayment to Deposit Account No. 13-2725. A duplicate copy of this sheet is
`enclosed.
`
`I|||ll|||||||ll||||||l|||||||l|||||||||ll|||||||||
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`06-15-2006
`U.8.Pa12ent & TMOreITM Mall Hcpt Dt. -iii
`
`(TM GENERAL FILING)
`
`

`
`Merchant & Gould
`
`An Intellectual Property Law Firm
`
`C
`D.
`“ea Omact
`
`6123364616
`jclifford@merchant—gouldicom
`
`In re Application of: Cosmetic Warriors Limited
`Mark: KARMA
`Serial No.: 78/629048
`Examining Atty: Colleen Keamey
`Filing Date: May 12, 2005
`
`PO. Box 2910
`
`L
`
`Minnea olis,Minn5ora
`
`sswzislousa
`
`TELm‘m‘53°°
`FAX 612.332.9081
`
`wwwmerchant-gould.oom
`
`A Profasional Corporation
`
`Docket No.: 14816.10-US-O1
`Due Date: June 23, 2006
`Law Office: 113
`
`‘
`
`CERTIFICATE UNDER 37 CFR 2.197: The undersigned hereby certifies that this Transmittal Letter and the paper, as
`described herein, are being deposited in the United States Postal Service, as first class mail
`in an envelope addressed to:
`Commissioner for Trademarks. PO. Box 1451, Alexandria, VA 22313-1451, on June
`, 2006.
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`Dear Commissioner:
`
`We are transmitting herewith the attached:
`
`Transmittal Sheet in duplicate containing Certificate of Mailing under 37 C.F.R. 2.197.
`Return postcard.
`Amendment to Office Action dated December 23, 2005.
`Other: Specimen and signed Declaration in support thereof.
`
`Please charge any additional fees or credit overpayment to Deposit Account No. 13-2725. A duplicate copy of this sheet is
`enclosed.
`
`(TM GENERAL FILING)
`
`

`
`"Please place on Upper Right Corner”
`“of Response to Office Action ONLY.” V
`Examining Attorney: KEARNEY, COLLEEN
`Serial Number: 78/629048
`
`llllllllllllllllllllllllllllllllllllllllllll
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Cosmetic Warriors Limited
`
`Serial No.:
`
`78/629048
`
`Filed:
`
`Mark:
`
`May 12, 2005
`
`KARMA
`
`p
`
`;
`
`Exam.Atty: Colleen Kearney
`
`Law Office: 113
`
`Docket No.: 14816.10-US—0l
`
`AMENDMENT
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Commissioner:
`
`This is in response to the Official Action mailed December 23, 2005 wherein the
`
`Examining Attorney has required a specimen to be filed in support of the application basis, and
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`she has noted a potential Section 2(d) refusal in View of earlier filed pending applications.
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`Please enter the following amendment:
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`IN THE APPLICATION
`
`Please amend the application to enter the enclosed substitute specimen and signed
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`Declaration in support thereof.
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`REMARKS
`
`The Examining Attorney's Action has been carefully reviewed and response is
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`made thereto. Reconsideration is respectfully requested.
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`Applicant submits herewith an appropriate specimen showing the mark as used in
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`connection with the goods. The specimen is a tag that is affixed to the product. Also enclosed is
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`the required signed Declaration attesting that the specimen was in use in commerce in connection
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`with the goods at least as early as the filing date of the application.
`
`

`
`Serial No. 78/629048
`Law Office 113
`
`Examining Attorney Colleen Kearney
`
`Potential Section 2(d) Refusal - Likelihood of Confusion:
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`In the action, the Examining Attorney has indicated that a search of the Trademark
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`Office records found no similar registered marks which would bar registration of Applicant’s
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`mark; however she did locate four earlier filed pending applications which may provide the basis
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`for a formal Section 2(d) "similarity" refusal if one or more matures to registration. Specifically,
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`she has identified applications
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`SN 76/197195 for KARMA MEMPHIS owned by Apex Products Company;
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`SN 78/628885 for KARMA GUARD owned by Andy Goldmark, an individual;
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`SN 78/518918 for PURE KARMA owned by California Tan, Inc.; and
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`SN 78/518925 for DEEP KARMA also owned by California Tan, Inc.
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`Applicant notes that application SN 78/518925 for DEEP KARMA has been abandoned and thus
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`is no longer a potential bar to registration of the current mark.
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`It is the Examining Attorney's position that Applicant's mark, when used on or in
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`connection with the identified goods, so resembles the marks of the cited applications as to be
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`likely to cause confusion or to cause mistake or to deceive. Applicant respectfully disagrees with
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`the Examining Attorney's determination and contends that registration of its mark will not
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`generate a likelihood of confusion.
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`When considering the issue of likelihood of confusion, the Examining Attorney
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`must consider all of several relevant factors that may shed light upon the effect of the use of the
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`marks in connection with the goods. In re E. I. DuPont deNemours & Co., 476 F.2d 1357, 1360-
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`62 (C.C.P.A. 1973); TMEP § 1207.01 (citing .
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`It is to be noted that no one of the various factors is determinative of the issue of
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`likelihood of confusion; rather, the Examining Attorney must look at the cumulative effect of all
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`factors to determine whether or not there is a likelihood of confusion. The test of likelihood of
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`confusion includes a consideration of the similarity or dissimilarity of the marks in their
`
`

`
`Serial No. 78/629048
`Law Office 113
`
`Examining Attorney Colleen Kearney
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`entirelies as to appearance, sound and commercial impression. In re the Hearst Corp., 982 F.2d
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`493, 25 USPQ2d 11238 (Fed. Cir. 1992). Thus, the mere fact that the Applicant's mark is similar
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`in part to the cited marks is gt, in itself, dispositive of the issue of a likelihood of confusion.
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`Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 718 (Fed. Cir. 1992).
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`Applicant submits that the obvious differences in its mark when taken as a whole
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`is sufficient to obviate any likelihood of confusion that the marks belong to the same party or that
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`the goods originate from the same source.
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`When considering the similarity of marks, all relevant facts pertaining to the
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`appearance and connotation must be considered. Recot Inc. V. M.C. Becton, 214 F.3d 1322, 54
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`USPQ2d 1894, (Fed. Cir. 2000), TMEP Section l207.0l(b) Each of the cited marks is for
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`KARMA with an second, equally prominent term included with KARMA. Applicant's mark is
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`distinguished from each due to its lcz_cI_c of additional wording. It is submitted that Applicant's
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`mark is no more likely to create confusion in the marketplace in view of the cited marks than are
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`any of the cited marks themselves. "Similarity of the marks in one respect -— sight, sound or
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`meaning -- will go; automatically result in a finding of likelihood of confusion even if the goods
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`are identical or closely related" (emphasis added). TMEP l207.0l(b)(i). Sehn Manufacturing
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`Co. V. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ
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`KIDS create different commercial impressions), TMEP 1207.01(b)(iii). It is well known that the
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`average shopper is accustomed to encountering Various marks with varying degrees of similarity
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`for the same or related goods. The average consumer is aware that such marks used on such
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`goods does not imply that the marks are owned by the same party or that the goods originate from
`the same source.
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`There are numerous cases to support Applicant's position that although its mark
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`and the cited mark may be construed to be "similar in part", there is no likelihood of confusion.
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`In re Hearst Corp, supra, re VARGAS and VARGA GIRL, both for calendars with pictures;
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`B.V.D. Licensing Corp. V. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719
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`Cir. 1988), re B.V.D. and B.A.D, both for clothing; Chairworks Taiwan Ltd. V. Bannister,
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`

`
`Serial No. 78/629048
`Law Office 113
`
`Examining Attorney Colleen Kearney
`
`13 USPQ2d 2070 (M.D.N.C. 1989), re CHAIRWORKS and CHAIRMAN, both for chairs;
`
`Nabisco Brands, Inc. v. Quaker Oaks Co., 547 F.Supp. 692, 216 USPQ 770 (D.C.N.J. 1982) re
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`CREAM OF WHEAT and CREAMY WHEAT, both for breakfast cereals. It is evident from the
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`above sampling of only a few cases, that marks being "similar in part" require a higher degree of
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`consideration given to the mark as a whole.
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`Aside from the differences in the marks themselves, Applicant believes the fact
`
`that the cited marks are owned by different parties must be taken into consideration. As noted
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`above, it is submitted that the average consumer does not automatically assume that goods
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`having seemingly similar marks originate from the same source. Applicant notes that it has used
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`its mark on its goods in the United States continuously since 1997 and submits that registration
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`of the mark will not create any likelihood of confusion in the marketplace with the marks and/or
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`goods of the cited applications.
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`Conclusion:
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`In View of the foregoing and upon withdrawal of the potential Section 2(d)
`
`refusals, it is submitted that the application is in condition for publication.
`
`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`P.O. Box 2910
`
`Minneapolis, Minnesota 55402-0910
`(612) 332-5300
`
`A. Clifford
`. No. 30,247
`
`-
`
`CERTIFICATE UNDER 37 CFR 2197:
`
`.
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as firstclass mail in an envelope
`addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451 on June é , 2006;
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Cosmetic Warriors Limited
`
`Serial No.:
`
`78/629048
`
`Exam.Atty: Colleen Kearney
`
`Filed:
`
`Mark:
`
`May 12, 2005
`
`KARMA
`
`Law Office: 113
`
`Docket No.: 14816.10-US—Ol
`
`DECLARATION IN SUPPORT OF SPECIMEN
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Commissioner:
`
`‘$13 Declarant,
`
`|name| KAQL UDSEEH 8\2'Q—tQf}Y€
`
`, states as follows:
`
`‘~,{=,
`
`1. That I am title INTeJ.z_Ec,TuA]= Vjfigflgfl
`
`of the Applicant herein;
`
`2. That attached hereto 1s a specimen showing the mark as used on Applicant's
`
`goods in Class 3, and that such specimens were in use in commerce in connection with the goods
`
`since at least as early as the filing date of this application.
`
`3. The undersigned being hereby warned that willful false statements and the like
`
`are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such
`
`willful false statements and the like may jeopardize the validity of this document or the
`
`application or any registration resulting therefrom, declares that he/she is properly authorized to
`
`execute this document on behalf of the Owner; and all statements made of his/her own
`
`knowledge are true and that all statements made on information and belief are believed to be true.
`
`Date: BZ3 [Q24
`
`Signed:
`.35 Name:
`X Title:
`
`tK§T'a1gg;.C;E4AL €Qo?ez,:\; m/km\c;~a€
`
`

`
`SPECIMEN:
`TM SN 78/629048
`Mark: KARMA