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REPLY

This is in response to the Registrability Report issued by the Trademark Examiner last

August 05, 2014 concerning our application or the trademark “CUTICOLORS AND

DEVICE”. 

The examiner therein ound that the trademark !hich applicants seek to register or nail

 polish under "lass # o the $ice "lassiication is conusingly similar !ith the trademark %"&T'E

"&R() or mascara o!ned by *A "osmetics+

ursuant to -ection 1##+# o the 'ntellectual roperty "ode granting the applicants a

 period o our .4/ months to reply or amend the application, the applicants maintain in this

RE( that

1. The application met the iling reuirements o -ection 123 o the 'ntellectual roperty "ode,

and that such !as not disputed by the Examiner

2. The application met the reuirements proided under -ection 124+1 o the 'ntellectual roperty

"ode, and that such !as not disputed by the Examiner

3. "ontrary to the indings o the Examiner that the application must be denied on the ground that

it ailed to comply !ith -ection 12#.d/ o the 'ntellectual roperty "ode, because it is identical

!ith a registered mark belonging to a dierent proprietor, applicants are o the ie! that the

application must be gien due course as the applicants beliee that CUTICOLORS is notconfusing! si"i#$ %it& CUTIE CURL+ This is on account o the ollo!ing considerations

#. 6hile both "&T'"7(7R- and "&T'E "&R( belong to the same category under 

"lass # o the $ice "lassiication .cosmetic products/, !e beliee that conusion is not likely to

occur in ie! o the nature o the products inoled+ The products inoled are cosmetic

 products, !hich are usually purchased by !omen !ho are discerning as to their choice in

 purchasing the same+ This is urther illustrated by the act that cosmetic products are usually sold

in department stores, malls and similar establishments !ith the assistance o sales ladies !ho

ans!er the ueries o purchasers as to the said cosmetic products+

'. A casual purchaser o make8up, nail polish, mascara and other cosmetic products

is predisposed to be more selectie, cautious, discriminating in and !ould preer to mull oer her 

 purchase+ &nlike in her purchase o ordinary household items such as inegar, soy sauce, or 

soap, she !ould usually employ the same prudence and 9udgment in buying 9eans and other 

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articles o clothing+ The ordinary purchaser kno!s the dierence bet!een mascara, used or 

one:s eyelashes and a nail polish, used or one:s nails+ ;ore credit should be gien to the ordinary

 purchaser, !ho is not the completely un!ary consumer, but is the ordinarily intelligent buyer 

considering the type o product inoled+

c. 'n determining similarity and likelihood o conusion, t!o tests had been

deeloped the holistic test and dominancy test. The dominancy test sets sight on the similarity

o the prealent eatures o the competing trademarks that might cause conusion and deception+

&nder this norm, the uestion at issue turns on !hether the use o the marks inoled !ould be

likely to cause conusion or mistake in the mind o the public or deceie purchasers+ 7ne o the

 prealent eatures o the trademark "&T'E"7(7R- is the logo consisting o t!o hands !ith

nails painted !ith arious colors, !hile that o "&T'E "&R( is only its tradename, !ithout any

accompanying illustration+ 'n the application, applicants also claimed certain colors .red, orange,

yello!, blue, iolet, green, pink, yello! green, yello! orange, red orange, and blue green/ as

distinctie eatures o the mark, !hile no such colors !ere used in the trademark being compared

!ith that o applicants: trademark+ The t!o trademarks put side by side, it !ould be easy or the

consumer een !ithout careul scrutiny to discern that the t!o trademarks pertain to dierent

 products and dierent origins+

(. "&T'"7(7R- consists o only one !ord and our syllables, !hile "&T'E "&R(

consist o t!o !ords and three syllables+ The origin and inspiration o the t!o trademarks are

also easily discernible+ %"&T') in "&T'"7(7R- obiously reer to %cuticles) as the trademark 

is sought to be employed in nail polishes+ "&T'E in "&T'E "&R(-, on the other hand,

originated rom "&TE+ The !ord "7(7R- in "&T'"7(7R- also indicate that the product

inoled many colors, !hich is the main selling point o a nail polish, unlike in a mascara !here

color is not really a eature o the product+

T)ERE*ORE, applicants maintain that "&T'"7(7R- is not confusingly similar to

"&T'E "&R(+