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  76/009321

 

The examining attorney aknowledges the applicant’s response to the office action of March 5, 2002.  The following refusals and requirements are maintained 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 marks in U.S. Registration Nos. 2177679 and 2215583 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207. 

 

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.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  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.  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).  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

Applying the above analysis to this application, the trademark attorney must first conclude that the marks are nearly identical.  Each mark contains as its dominant or whole portion the wording ULTAFINE or a phonetic equivalent thereof.  Thus, the marks are nearly identical.  The registrant’s inclusion of the generic “silver” does not remove this conclusion.  Silver is disclaimed as generic in the registered mark.  While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Disclaimed matter is typically less significant or less dominant.

 

As to the second part of the test, the goods are related as they are jewelry.  Therefore, because the marks are similar and the goods are related, there is a likelihood of confusion and registration must be refused.  This refusal is made FINAL.

 

Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.  A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose, intended user or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).  It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

Here, the mark is ULTRA-FINE.  ULTRA means extreme or immoderate.  FINE describes the goods as small in size or thickness or describes the goods as being of great quality.  See the attached printout from The American Heritage Dictionary of the English Language, Third Edition (1992).  Taken together, the wording ULTRA-FINE describes goods which are extremely great in quality or extremely small in size or thickness.  This describes an ingredient, quality, characteristic, function, feature, purpose, intended user or use of the relevant goods and warrants refusal under section 2(e)(1).  See also attached evidence of descriptive use of the wording in commerce.

 

Drawing

Additionally, the drawing and the specimen do not agree.  The drawing displays the mark as ULTRA-FINE.  However, this differs from the display of the mark on the specimens, where it appears as UF.  The applicant must either:

 

  (1)  submit a new drawing of the mark which agrees with the specimens; or

 

  (2)  submit a substitute specimen which shows use of the mark shown in the drawing. 

 

37 C.F.R. Section 2.51; TMEP section 807.14.  The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. Section 2.72(a); TMEP section 807.14(a).

 

If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that it was in use in commerce at least as early as the filing date of the application.  37 C.F.R. Sections 2.59(a) and 2.72(b); TMEP section 905.10.

 

The statement supporting use of the substitute specimens must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. 

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20. 

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

                        _____________________________                                  

                                    (Signature)

 

                        _____________________________

                        (Print or Type Name and Position)

 

                        _____________________________

                                   (Date)

 

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. Section 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. Section 2.65(a).

 

 

 

 

 

 

 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Daniel Capshaw/

Examining Attorney

Law Office 109

703-308-9109, ext. 199

ecom109@uspto.gov (Formal Responses Only)

 

 

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.