Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

FINAL 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  76/022192

 

On June 22, 2001, action on this application was suspended pending the disposition of Application Serial Nos. 75/607217 and 75/886134.  The referenced applications have been abandoned.  The refusal under Section 2(d) included in the first Office action is continued and made FINAL for the reasons discussed below.

 

I.  Status

 

The applicant filed to register TERRANOVA for  “retail clothing and footwear shops and stores, featuring dresses, skirts, suits, trousers, shirts, jackets, overcoats, raincoats, coats and pullovers, vests, hats, scarves, foulards, hosiery, gloves, belts for clothing, handbags, sunglasses, personal accessories, shoes, boots, sandals, clogs and slippers; retail department stores; retail perfumery and cosmetic shops and stores; retail imitation jewelry shops and stores; retail watch shops and stores; retail baggage shops and stores; retail sporting goods shops and stores; retail consignment shops and stores featuring clothing, footwear, perfumery, cosmetics, handbags, sunglasses, imitation jewelry, watches, baggage, sporting goods and personal accessories; retail outlets featuring clothing, footwear, personal accessories, perfumery, cosmetics, handbags, sunglasses, imitation jewelry, watches, baggage and sporting goods; wholesale stores featuring clothing, footwear, personal accessories, perfumery, cosmetics, handbags, sunglasses, imitation jewelry, watches, baggage and sporting goods; and business services, namely offering technical assistance in the establishment and/or operation of the foregoing shops and stores.

 

In a first Office Action, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1565355 as to be likely, when used for the identified services, to cause confusion, or to cause mistake, or to deceive.  The examining attorney also informed the applicant of conflicting applications.  Additionally, the examining attorney required the applicant to address informalities.

 

The applicant acceptably addressed the informalities in a response to the first Office action.  The applicant also submitted arguments in support of registration. 

 

The application was suspended pending the disposition of the previously cited potentially conflicting applications that have since been abandoned.

 

The examining attorney has considered the arguments submitted with the applicant’s response to the first Office action carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

II.  Reasoning for Final Action

 

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 this case, the following factors are the most relevant:  similarity of the marks and similarity of trade channels of the goods and services.

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

In this instance, applicant and registrant use the identical TERRANOVA mark.  The identical marks are used for closely related goods and services.  The registrant’s cosmetic and toilet preparations are the type of goods that originate from the applicant’s retail perfumery and cosmetic shops,stores and other retail facilities.

 

In this case, the goods and service are related commercially and travel in the same channels of trade.  Third party registrations, based on use in commerce, demonstrate that cosmetics and retails services featuring cosmetics commonly emanate from a single source and are thus commercially related.  See attachments regarding 15 registrations.  The courts have considered third party registrations, based on use in commerce and covering a number of differing goods, as probative in determining whether goods travel in the same channel of trade.  In re Mucky Duck Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

 

The applicant argues that “customers are especially ready to expect that sources differ where trademark in question is a term that is seen frequently in the marketplace.”  According to the applicant, the web page evidence it submitted demonstrates that no likelihood of confusion exists.  The evidence, however, fails to demonstrate that consumers are accustomed to seeing the term TERRANOVA in common usage for cosmetics goods and related retail services.

 

It is highly likely that a consumer, having previously encountered the registrant’s TERRANOVA cosmetics goods, would mistakenly believe that the applicant’s TERRANOVA retail cosmetic store and shop services also originated from the registrant.

 

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 that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Thus, for the reasons stated above, the examining attorney must continue and make FIANL the refusal under Trademark Act Section 2(d).

 

III.  Proper Response to a Final Action

 

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.

 

 

 

 

/Rudy Singleton/

Examining Attorney, Law Office 102

(703) 308-9102 ext. 266

 

 

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.