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  76/029637

 

This letter responds to the applicant's communication filed on April 7, 2003, in which the applicant argued against the refusal to register the mark under Section 2(d) of the Trademark Act.

 

Section 2(d) Refusal Continued and Made FINAL

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark so resembles the marks shown in U.S. Registration Nos. 2532635 and 2579379 as to be likely, when used on the identified goods, to cause confusion, to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal to register the mark under Section 2(d) is maintained and made FINAL.

 

The examining attorney determined that the applicant’s mark STRUCTURE for “home and office furniture” in International Class 020.  Registration Number 2532635, STRUCTURES, is for “metal drapery hardware, namely, drapery rods, traverse rods, curtain rods, poles, tubing and tracks, finials, brackets, supports, namely, hooks, screws, nails, bolts and head rails, pole rings and cord pulleys” in International Class 006 and for “non-metal drapery hardware, namely, drapery rods, traverse rods, curtain rods, poles, tubing and tracks, finials, brackets, supports, namely, hooks, screws, nails, bolts and head rails, pole rings and cord pulleys” in International Class 020. Registration No. 2579379, STRUCTURE, is for “electrical lighting fixtures” in International Class 011. The applicant has argued that the marks are not likely to be confused because (1) the marks are weak; (2) that the two cited registrations are on the register without conflict and (3) that there is no evidence that the applicant’s and registrants’ goods are sold in the same trade channels. The examining attorney finds these arguments without merit.  For the following reasons, the examining attorney maintains and continues and makes FINAL her refusal to register:

Analysis

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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

Similarities of the Marks

 

Applicant:                                 STRUCTURE

 

Registration No. 2532635:            STRUCTURES

 

Registration No. 2579379:            STRUCTURE

 

The applicant’s mark is identical to Registration No. 2579379, and nearly identical to Registration No. 2532635.  As stated in the Office Action dated October 3, 2002 and incorporated herein by reference, small changes in words (e.g. hyphenation or spacing changes, pluralization, phonetic substitution) are insufficient alone to distinguish marks.  Thymo Borine Laboratory v. Winthrop Chemical Company, Inc., 69 USPQ 512 (CCPA 1946); Steinway & Sons v. Robert Demars & Friends, et al., 210 USPQ 954 (C.D. Cal. 1981).  Here, the “s” in Registration No. 2532635 makes little difference in distinguishing the marks.  In fact, the applicant has agreed that “[t]hey are essentially identical in sound, appearance, and connotation.”  (Applicant’s Response dated April 7, 2003 at p. 2).

 

If the marks of the respective parties are identical or highly similar, 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).

 

Similarity of the Goods and Services

 

Applicant:         “Home and office furniture” in International Class 020.

 

Registration No. 2532635: “Metal drapery hardware, namely, drapery rods, traverse rods, curtain rods, poles, tubing and tracks, finials, brackets, supports, namely, hooks, screws, nails, bolts and head rails, pole rings and cord pulleys” in International Class 006

 

            “Non-metal drapery hardware, namely, drapery rods, traverse rods, curtain rods, poles, tubing and tracks, finials, brackets, supports, namely, hooks, screws, nails, bolts and head rails, pole rings and cord pulleys” in International Class 020.

 

Registration No. 2579379: “Electrical lighting fixtures” in International Class 011.

 

The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

Here, the applicant’s goods and registrant’s goods are highly related.  The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v). 

 

As evidenced by the enclosed registrations and the registrations attached to the October 3, 2002 Office Action and incorporated herein by reference, it is quite common for a registrant to use their mark on furniture, curtain rods and electrical lighting fixtures.    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).  TMEP §§1207.01(d)(i).    Thus, there is a substantial likelihood of consumer confusion.  The goods are sufficiently related to satisfy the second part of the Section 2(d) analysis.

 

Applicant’s Arguments

 

The applicant has argued that the cited registrations are weak because the goods in the cited registrations are related, yet have been allowed to register despite the potential conflict.  Previous decisions of examiners allowing other marks are without evidentiary value and are not binding on the agency or the Trademark Trial and Appeal Board.  Each case must be decided on its own merits.  In re National Novice Hockey League, Inc., 222 USPQ 638, 639 (TTAB 1984). 

 

Furthermore, the marks are not weak.  It is not descriptive or laudatory, and there are very few marks on the register that use the word STRUCTURE or STRUCTURES as a full mark.  Of the 13 STRUCTURE or STRUCTURES marks (full marks, without any other wording or design, similar to the registrations and applicant’s mark), the only marks found to be of related goods were the marks cited against the applicant.  See attached registrations and applications.  Besides, even “weak” marks, e.g. laudatory or descriptive marks, are entitled to protection from registration of a confusingly similar mark for closely related goods/services.  In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978). 

Finally, the applicant has argued that there is nothing in the record that indicates that those who purchase furniture will also encounter drapery rods or lighting fixtures.  The applicant argues “Applicant’s home and office furniture is purchased by end-consumers looking to furnish their homes or offices.  Electrical fixtures, on the other hand, and drapery rods and hardware are often purchased by interior decorators and/or home builders.”  (Applicant’s Response p. 3).  This statement is inaccurate.  As shown by the attached printouts from the Internet, curtain rods, lighting fixtures and furniture are all often sold in the exact same locations and will be encountered by the exact same consumers.  The Trademark Trial and Appeal board has considered the admissibility of Internet evidence and held it to be admissible.  Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998).

 

In sum, because the marks are identical or nearly identical and due to the high degree of relatedness of the applicant’s goods to registrants’ goods, registration of the applicant’s mark must be refused because it is likely to cause confusion with the registrants’ marks under Section 2(d) of the Trademark Act.  The refusal to register the mark under Section 2(d) of the Trademark Act is, therefore, maintained and made FINAL.

 

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 Appeals 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 concerning this action, please contact the assigned Examining Attorney at the number listed below.

 

 

/Susan C. Hayash/

Trademark Examining Attorney

Law Office 110

Office:  (703) 308-9110 x.144

Fax:      (703) 746-8110

ecom110@uspto.gov (FORMAL responses)

susan.hayash@uspto.gov (INFORMAL responses)

 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accept applications that are filed on or after that date that are not accompanied by a minimum of $335.00.

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.

 

A Final Rule amending the Rules of Practice in Trademark Cases to provide for this fee increase was published in the Federal Register on November 27, 2002 (67 Fed. Reg. 70,847 (2002)). <http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov/2002/02-30086.htm>>

 

How to respond to this Office Action:

 

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

 

To respond formally via E-mail, visit http://www.uspto.gov/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.uspto.gov/

 

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

 

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