Gianfranco De Paoli Ambrosi

Trademark Trial and Appeal Board

Jun 8, 2000

No. 75171483re (T.T.A.B. Jun. 8, 2000)

Paper No. 14
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 8, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Gianfranco De Paoli Ambrosi
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Serial No. 75/171,483
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Request for Reconsideration
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Jess M. Collen of Collen Law Associates for Gianfranco De Paoli
Ambrosi.
Judy Grundy, Trademark Examining Attorney, Law Office 106 (Mary
Sparrow, Managing Attorney).
_______
Before Walters, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Gianfranco De Paoli Ambrosi has requested reconsideration
of the Board’s decision of April 4, 2000 in which we affirmed
the Trademark Examining Attorney’s refusal to register the term
“SYNCHROLINE”1 because it was likely to be confused with the
registered mark, “SYNCHRO SERUM,” as applied to identical and
closely-related skin care and cosmetic products.

1 Serial No. 75/171,483, filed on September 20, 1996, based upon a
bona fide intention to use the mark in commerce, and pursuant to
Section 44(e) of the Lanham Act, based upon Italian Reg. No. 547,123,
which registered on July 4, 1991.
Serial No. 75/171,483
2
Applicant bases this request for reconsideration on the
grounds that it never received a copy of the Trademark Examining
Attorney’s appeal brief, and because the Board misapplied the
law to the facts of the case.
In the normal course of Office practice, a copy of the
Trademark Examining Attorney’s appeal brief of May 20, 1999
would have been mailed to applicant at the correspondence
address as listed, consistent with 37 C.F.R. §2.142. However,
sometime between the filing of this application in September
1996 and applicant’s response of October 1997, counsel changed
his mailing address. The mere transmittal of a response to an
Office Action bearing a new address for applicant's attorney
does not result in a change in a correspondence address unless
there is a written request by the applicant or his or her
representative to do so. See 37 C.F.R. 2.18, TMEP §603.
Accordingly, it appears from the computerized labels that the
Trademark Examining Attorney’s brief was sent to applicant’s
counsel in care of the McGlew & Tuttle firm. In fact, to this
very day, that remains the correspondence address for this
application in the Office’s computerized database.
However, we note that applicant’s appeal brief was filed
with the U.S. Patent and Trademark Office on December 28, 1998,
and the case file was forwarded on to the Trademark Examining
Attorney by an order of the Board on March 23, 1999, setting in
Serial No. 75/171,483
3
motion the sixty day period in which the Trademark Examining
Attorney’s written brief was due. Given backlogs at the
Trademark Trial and Appeal Board, the decision issued more than
ten months after this responding brief was submitted. Hence,
even if the Office did fail to mail a copy of the Trademark
Examining Attorney’s appeal brief to applicant at counsel’s new
address, it was sixteen months after applicant filed its appeal
brief until this final decision issued. If this pending
application were still alive, and the Office had decided not to
file a brief, applicant should have expected to receive a
communication from the Board, a further Office action, a
telephone call, or even a notice of publication. In any case,
applicant has a responsibility to monitor pending trademark
applications with due diligence. Inquiries regarding the status
of pending matters should be made within twelve months of the
filing or receipt of any document for which further action by
the Office is expected. See TMEP §413. Undeniably, if a copy
of the Trademark Examining Attorney’s brief was not received by
applicant, and no due diligence inquiry was made, applicant did
lose the opportunity to file a reply brief and/or request an
oral hearing2. However, many applicants do not avail themselves
of these procedural steps in any event.

2 Logically, if appellant was still waiting for the Trademark
Examining Attorney’s brief, it could not be expected to know time was
Serial No. 75/171,483
4
We turn now to the substance of applicant’s request for
reconsideration. Applicant argues that the Board incorrectly
applied the law to the facts at hand. Specifically, applicant
charges that the Board, in our decision of April 4, 2000,
impermissibly dissected the mark. However, throughout the
prosecution of this application, applicant has taken the
position that prospective purchasers would parse this coined
mark as “Syn·chroline” or “Synch·roline” (rather than as
“Synchro·line”) because “… it is visually quite difficult to
extract the “Synchro” portion of the mark.” (Applicant appeal
brief, unnumbered p. 3). We simply disagreed with applicant’s
assertion for the reasons stated in that decision.
As to the third-party marks in International Class 3,
applicant takes the position that the prefix herein is weak in
the field of cosmetics and toiletries, and has repeatedly cited
to four trademarks -- SYNCHRON, LIP SYNCH, SYNCHRO-CLIK AND
COLOR SYNC. The conclusion in the penultimate paragraph of the
decision of April 4, 2000 contained the following language:
“Finally, of the one or two marks having the two
syllables “-syn·chro-“ somewhere within the mark,
(where the marks are used on cosmetics or
toiletries), these marks are different from

running to file a reply brief. Further, if applicant desires an oral
hearing, that request must be filed within ten days after the due date
for a reply brief. However, applicant can always make a request for
an oral hearing at an earlier date in the appeals process.
Serial No. 75/171,483
5
applicant’s mark and from registrant’s mark in
overall appearance and connotation.”
In so stating, we were essentially narrowing applicant’s list of
four other third-party marks to two – SYNCHRON and SYNCHRO-CLIK
– both of which begin with the same seven letters as do
registrant’s cited mark and applicant’s applied-for mark.3 Upon
further reconsideration, this does not appear to be a mistake.
Whenever an applicant makes the argument that its mark should be
registered given the weakness of a mark, it is logical and
entirely appropriate under the law to observe, if true, that the
other third-party marks could more easily co-exist on the
registry with registrant’s mark without a likelihood of
confusion than is the case with applicant’s mark.
For the reasons stated herein, we stand by our earlier
decision affirming the refusal to register in this case on the
ground of likelihood of confusion under Section 2(d) of the
Trademark Act.
C. E. Walters
D. E. Bucher

3 By contrast, LIP SYNCH begins with the word LIP and then shares a
five-letter string with the two marks at issue herein, while COLOR
SYNC begins with the word COLOR and then shares only a four-letter
string with the two marks at issue.
Serial No. 75/171,483
6
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board