Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/001089

 

This letter responds to the applicant's communication filed on December 18, 2002. 

 

The trademark examining attorney has reviewed the applicant's response and has determined the following.  The trademark attorney has considered the applicant's arguments against the Section 2(d) refusal carefully but found them unpersuasive.  Thus, the refusal of registration under Section 2(d) must be continued and made FINAL.

 

LIKELIHOOD OF CONFUSION

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Nos. 2517735 [NIKE ALPHA PROJECT], 1634188 [ALPHA]; 1525774 [ALPHA]; 1525773 [ALPHA INDUSTRIES]; 1243749 [ALPHA]; 1420574 [THE SHOE WORKS]; and 1156745 [SHOE WORKS],  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§ 1207.01 et seq.  See the previously enclosed registrations.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, cause confusion, or to cause mistake or to deceive.  TMEP §§ 1207.01 et seq.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services.  Federal Food, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

 

Thus, the examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. DuPont, supra..  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  Id.; In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

In regard to the first step, similarity in any one of the elements may be sufficient to indicate a likelihood of confusion.  In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01(b) et seq.  Trademarks may be found similar despite the addition, deletion or substitution of letters or words.  See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for computer software); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant held likely to be confused with TURCOOL for cutting oil); In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986) (McKENZIE'S (stylized) for processed frozen fruits and vegetables held likely to be confused with McKENZIE for canned fruits and vegetables); Crocker National Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986) (COMMCASH held likely to be confused with COMMUNICASH, both for banking services); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for clothing held likely to be confused with THE "21" CLUB (stylized) for restaurant services and towels); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (NEWPORTS for women's shoes held likely to be confused with NEWPORT for outer shirts); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON for microprocessor used in commercial laundry machines held likely to be confused with MILLTRONICS (stylized) for electronic control devices for machinery); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL for resinous chemicals used in dyeing textiles held likely to be confused with LUTEX for non-resinous chemicals used in the textile industry).

 

In regard to the Section 2(d) refusal based on Reg. Nos. 1634188 [ALPHA]; 1525774 [ALPHA]; 1525773 [ALPHA INDUSTRIES]; 1243749 [ALPHA]; 1420574 [THE SHOE WORKS]; and 1156745 [SHOE WORKS],  the examining attorney refers to the reasoning set forth in the office actions issued August 8, 2000 and April 18, 2001. 

 

In regard to Reg. No. 2517735, as set forth in the Office Action issued June 27, 2002, the Section 2(d) refusal is issued for the following reason:

 

A recognizable and dominant portion of applicant's mark is the word "ALPHA" which is identical to a recognizable and dominant portion of the registered mark.  As such, viewed as a whole, the applicant's mark is substantially similar in connotation and commercial impression to the registered mark.

As to the second half of the test, the goods are in part identical as to footwear and otherwise applicant’s footwear is closely related  to registrant’s other apparel goods.

 

The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii).

 

It is appropriate to give greater weight to the "ALPHA-2" portion of applicant's mark because it is the first part of the mark and the portion to which consumers will regard as a significant source indicator.

 

When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison but rather, whether the marks create the same overall impression.  Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).

             

The examining attorney points out that the goods here are common articles of apparel and not sophisticated or specialized goods.  As such, they are more subject to being selected on impulse as prospective purchasers are not as likely to take as much care in making their purchasing decision as they might with more sophisticated products. 

 

Where, as here, the goods of the respective parties are identical or closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  See also Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) ("when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.").

 

In regard to applicant’s submission of third-party registrations, it is noted that the vast majority of the marks present completely different commercial impressions and connotations from the impression created by the applicant’s mark or the cited registered marks.  In addition, most of them contain additional word elements, e.g., KAPPA ALPHA THETA [Reg. No. 1697702].   In any event, third-party registrations are not persuasive that confusion is not likely in this case because, without evidence or testimony concerning the extent of the use and promotion of the marks therein, the registrations themselves do not provide a basis upon which it could be concluded that the public has become so familiar with such marks that they look to small differences between them in order to distinguish among them.  The Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 USPQ 422 (CCPA 1975).

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  See, e.g., In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); Recot Inc. v. Becton, 56 USPQ2d 1859 (TTAB 2000); Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1915 (TTAB 2000) (“[O]ne who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril, and any doubt as to the similarity of the marks must be resolved against him”); Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191, 200-01 (TTAB 1979); see also Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181, 6 USPQ2d  2034, 2038 (9th Cir. 1988) ("A newcomer who has the 'entire material universe' or, stated in other terms, 'a whole dictionary full of words, an encyclopedia full of proper names, or a world atlas full of place names,' from which it could have chosen its name and mark, has the duty to avoid the use of a mark similar to an established one.").

             

In conclusion, since the marks are substantially similar and the goods are in part identical and otherwise closely related, there is a likelihood of confusion and registration must be refused.

 

OPTIONS

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 198

fax: (703) 746-8108

ecom108@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.