Applicant: Christi Harris Companies, Inc.
Application No. 77676634-Smart Beauté
Examining Attorney: N. Gretchen Ulrich
Law Office 113
Schott Music GmbH & Co. KG

RESPONSE TO OFFICE ACTION

The Christi Harris Companies, Inc. (“Applicant”) submits the following response to the office
action issued on May 15, 2009, in support of the registration of the application 77676634 for the mark
“Smart Beauté” under class 44 for the consultation services in the field of makeup, namely, on-line
makeup consultation services and in-person makeup consultation and application services
(“Application”). This Application was rejected based upon Section 2(d) likelihood of confusion with the
design mark SMARTBeauty U.S. Registration No. 3564277 registered under international class 3 for body
and beauty care cosmetics.

The Application should not be refused registration because the marks are dissimilar in
appearance, sound, connotation and commercial impression; the nature of Applicant’s services are
distinguishable and unrelated to Registrant’s goods; and Applicant’s relevant purchasing public is
distinguishable from Registrant’s. Therefore, the Application should not be refused for likelihood of
confusion because the relevant purchasing public will not be confused as to the source of Applicant’s
use of the mark “Smart Beauté” inc connection with its services.

I. Legal Authority

The query under a Section 2(d) analysis is whether the relevant purchasing public would likely
be confused as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993). The issue is not whether the actual goods are likely to be confused. Id.

The Court of Customs and Patent Appeals discussed the factors relevant to a determination of
likelihood of confusion in the case In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(C.C.P.A. 1973).

There is no mechanical test for determining likelihood of confusion and each case must be
decided on its own facts. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A.
1973); TMEP §1207.01. Every DuPont factor does not need to be considered; instead, only the factors
that are relevant are to be considered. Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350 (Fed. Cir. 2004).

B. Application of the Law to the Facts of this Case

In this case, the following du Pont factors are the most relevant in testing for likelihood of
confusion under Section 2(d): (1) The similarity or dissimilarity of the marks in their entireties as to
appearance, sound connotation and commercial impression; (2) the similarity or dissimilarity and nature
of the goods or services as described in an application or registration or in connection with which a prior

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Application No. 77676634-Smart Beauté
mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; and (4)
the conditions under which and buyers to whom sales are made, i.e. `impulse’ vs. careful, sophisticated
purchasing.

Considering the relevant DuPont factors below, the relevant purchasing public would not likely
be confused as to the source of Applicant’s makeup consultation services bearing the name “Smart
Beauté.”

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound
connotation and commercial impression.

For word marks, the points of comparison are appearance, sound, meaning, and commercial
impression. TMEP §1207.01(b)(i). In evaluating the similarities between marks, the emphasis must be
on the recollection of the average purchaser who normally retains a general, rather than specific,
impression of trademarks. TMEP §1207.01(b).

If the goods or services in question are not related or marked in such a way that they would be
encountered by the same persons in situations that would create the incorrect assumption that they
originate from the same source, then, even if the marks are identical, confusion is not likely. TMEP
§1207.01(a)(i). Moreover, even if two goods are used together, however, does not, in itself, justify a
finding of relatedness. TMEP §1207.01(a)(i).

The marks appear differently. SMARTBeauty is a design mark used in connection with goods.
This mark is unique in that the first word SMART is all capitalized and is combined with the word Beauty
to make it appear as one word with an emphasis on SMART. This mark used on goods looks completely
different from the word mark Smart Beauté that is used in connection with services. This mark consists
of two words, one of which is a foreign word that translates to beauty in English and with an emphasis
on Beauté. Thus, the marks are distinguished by appearance.

The marks sound different as well. Beauty and Beauté are pronounced differently. Moreover,
the emphasis is on SMART at the beginning of SMARTBeauty and the emphasis is on Beauté at the end
of Smart Beauté. Thus these marks are distinguishable by sound.

The connotation is different. SMARTBeauty is used in connection with goods, namely massage
lotions (see attached specimen for registration no. 3564277). Smart Beauté is used in connection with
services, namely makeup consultation. Massage and makeup are discernable characteristics. These
characteristics make up the meaning of the respective marks and thus define the objects (or services) to
which the mark is applied. Therefore, the connotation of the SMARTBeauty massage goods is different
from the connotation of Smart Beauté makup consultation services.

The commercial impression is dissimilar. The relevant average purchaser would understand that
the service mark “Smart Beauté” used in connection with consultation services in the field of makeup,
namely, on-line makeup consultation services and in-person makeup consultation and application
services, originated from a different source and would not likely be confused with the use of the mark

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Application No. 77676634-Smart Beauté
“SMARTBeauty” that is used in connection with body and beauty care goods, namely massage lotion.
Even if an ordinary American purchaser would “stop and translate” the foreign term Beauté into its
English equivalent, they would not be confused as to the source of “Smart Beauté” services because the
overall commercial impression of the mark is discernable.

The marks are not related and the marketing is different. Applicant markets “Smart Beauté” to
distinguish the name and general concept of a teaching, informative service about makeup application
to predominantly woman, namely via the Internet, hand-outs and in person via a storefront; the mark is
not a movable item that can be purchased or sold. Registrant appears to market “SMARTBeauty” on
goods, namely to gender neutral individuals who use massage lotions, which is generally marketed at
spas where massage services can be obtained.

Moreover, Applicant’s services relate to the application of only Applicant’s make-up cosmetics.
Applicant is not a supplier of, and will never be, a supplier of Registrant’s goods or any other brand.
Applicant is a great example of cosmetics and cosmetic consultation services emanating from a single
source. What separates Applicant from most, is that Applicant specializes in providing personalized
makeup consultations with trained professionals. There is no evidence that Registrant provides cosmetic
consultation services or even has the intent to expand into that industry.

The two marks do not appear, sound, mean or have the same commercial impression.
Moreover, the two marks are not marketed in such a way that they would be encountered by the same
persons in situations that would create the incorrect assumption that they originate from the same
source, thus confusion is not likely.

(2) The similarity or dissimilarity and nature of the goods or services as described in an
application or registration or in connection with which a prior mark is in use.

The nature and scope of a party’s goods or services must be determined on the basis of the
goods or service recited in the application or registration. TMEP §1207.01(a)(iii). Classification of goods
and services has no bearing on the question of likelihood of confusion. Rather it is the manner in which
the applicant and/or registrant have identified their goods or services that is controlling. TMEP
§1207.01(d)(v).

SMARTBeauty is a design mark registered under international class 3 for body and beauty care
cosmetics and advertised as Skin Massage Treatment (See attached Specimen). International class 3 is
defined as: Goods Bleaching preparations and other substances for laundry use; cleaning, polishing,
scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Smart Beauté is a word mark registered under international class 44 for consultation services in
the field of makeup, namely, on-line makeup consultation services and in-person makeup consultation
and application services. International class 4 is defined as: Services Medical services; veterinary
services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry
services.

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Application No. 77676634-Smart Beauté
Applicant identified its service in a different manner than Registrant’s goods. The different
identifications do not encompass each other. Therefore, the relevant purchasing public would not likely
be confused as to the source of the goods, especially when the respective sources themselves
distinguish their identities.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

A trademark owner is entitled to protection against the registration of a similar mark on
products that might reasonably be expected to be produced by him in the normal expansion of his
business. TMEP §1207.01(a)(v). The test is whether purchasers would believe the products or service is
within the registrant’s logical zone of expansion. TMEP §1207.01(a)(v).

Registrant sells goods. A makeup consultation service is not a common practice for Registrant
to use in connection with its products like Massage Treatment lotions that are unrelated in nature to
Applicant’s services.

Thus, it would be unlikely that the purchasing public would believe or reasonably expect
Registrant to expand into a whole different industry by providing a personalized service such as
Applicant’s.

This belief is reasonable because to provide Applicant’s services that require a storefront stocked
with furniture and makeup tables as well as completely different equipment, resources and skills in
comparison to Registrant’s manufacture of goods. Applicant invests extensive efforts and resources in
training its makeup artists who provide personalized makeup instruction to individual customers using
specific tools and products offered and sold by Applicant, not by any other manufacturer.

Therefore, it is unlikely that Registrant will expand into the makeup consultation services because
the entry costs into that industry are extensive given the intricacy involved, especially when it comes to
personalized makeup training.

Lastly, there is nothing in the record to show that Registrant has any intent to expand its use of the
mark in connection with any type or class of services.

(4) The conditions under which and buyers to whom sales are made, i.e. `impulse’ vs. careful,
sophisticated purchasing.

The conditions of service and relevant customers for Applicant are different in comparison to
Registrant. Applicant’s relevant customers are not impulsive but are more careful, sophisticated
shoppers because they are obtaining make up consultation from another individual for the life-term
investment of proper makeup application. This service is specifically tailored to Applicant’s relevant
customers who require having a certain level of trust with her consultant.

The conditions of purchase and relevant buyers for Registrant’s goods are more impulsive than
careful because a service is not involved and there is no personalized, memorable aspect for each
individual customer.

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Application No. 77676634-Smart Beauté
II. Conclusion

After review of the DuPont factors and all evidence of record, Applicant’s mark “Smart Beauté”
is dissimilar in appearance, sound, connotation and commercial impression to Registrant’s mark.
Moreover, Applicant’s specialized and professional consultation services in the field of makeup are
distinguishable from, and unrelated to, the nature of Registrant’s goods. It is reasonable to believe that
Registrant will not expand into the same industry of service as Applicant. Lastly, the conditions of
purchase and service of the relevant customers is distinguishable and unlikely to cause confusion as to
the origin of Registrant’s goods and Applicant’s services.

Therefore, Applicant’s Pending Application should not be refused registration because
Applicant’s use of the mark “Smart Beauté” will not affect the good will of Registrant’s business nor will
it expose the public to spurious or falsely marked goods/services.

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Application No. 77676634-Smart Beauté