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  76/137114

Introduction

 

The Office has reassigned this application to the undersigned examining attorney. The prior examining attorney, James Ringle, is no longer with the Office.

 

This responds to applicant’s communication dated October 17, 2002.

 

In applicant’s communication the applicant: (1) submitted a substitute drawing of the mark; (2) submitted arguments against the refusal to register under Trademark Action Section 2(d) as to Reg. No. 2237758.

 

While this information has been entered into the record, item 1 is not acceptable, as explained below.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 0762400 and 2237758 as to be likely, when used on the identified goods/services, to cause confusion, or 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 under Section 2(d) is continued and maintained.

 

Drawing-Material Alteration

 

The applicant has amended the drawing of the mark to delete the wording “FROM GUILFORD MILLS, INC.” from the mark.[1]

 

The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).

 

The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.  37 C.F.R. §§2.72(a)(2), 2.72(b)(2) and 2.72(c)(2).  In this case the removal of the wording “FROM GUILFORD MILLS, INC.” would change the commercial impression of the mark as the mark conveys two different commercial impressions when the wording is included and removed. Such an amendment is unacceptable.

 

The applicant must submit a substitute drawing restoring the wording “FROM GUILFORD MILLS, INC.” in the mark.

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Proposed Amended Identification of Goods-Not Acceptable

 

As explained in TMEP Section 807.05, prior to October 30, 1999, an applicant was required to submit a separate drawing page in order to receive a filing date, and the drawing page was considered a separate element that was not part of the written application.  The Office would look to the drawing to determine what the mark was, and the written application controlled for all other purposes.  The applicant was required to set forth the identification of goods/services and basis for filing within the four corners of the written application. 

 

If the written application included an identification of goods or services, and additional goods or services were listed on the drawing page, the additional goods or services listed on the drawing page were not considered part of the identification of goods/services. 

 

Effective October 30, 1999, Office practice changed.  Now a separate drawing page is encouraged, but not required.  TMEP §807.01(a).  If the applicant submits a separate drawing page, this page is considered part of the written application, not a separate element.  An application will receive a filing date if the identification of goods or services appears only on the drawing page.  If the written application includes an identification of goods or services, and additional goods or services are listed on the drawing page, the additional goods/services listed on the drawing page are considered part of the identification of goods/services in the written application.  Dates of use, disclaimers, descriptions of the mark, and other information that appears on the drawing are also considered part of the written application.  This applies to substitute drawings as well as original drawings.  See TMEP §1402 et seq. regarding examination of the identification of goods/services.

 

The applicant’s substitute drawing page submitted on July 9, 2001, and the subsequent substitute drawing submitted on October 17, 2002, contains the following identification of goods:

 

• Fibers to be used in the manufacture of textile fabrics.

 

The applicant’s identification of goods, as originally submitted, consisted of the following identification of goods:

 

• Fabric for use in automotive interiors and in the manufacture of apparel.

 

The proposed amendment of the identification is unacceptable because it designates goods that are not within the scope of the identification that was set forth in the application at the time of filing.  In particular “fiber” is a different product classified in different classes than the designated “fabric” Moreover, the application, as submitted, specified a limited use of the fabric that “for use in automotive interiors and in the manufacture of apparel.”  In contrast the proposed amended identification states that the “fiber” is “to be used in the manufacture of textile fabric.” While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.

 

Refusal to Register-Likelihood of Confusion-Continued and Maintained

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 0762400 and 2237758 as to be likely, when used on the identified goods/services, to cause confusion, or 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 under Section 2(d) is continued and maintained.

 

As to Reg. No. 2237758, applicant contends that the “clothing, namely, shirts, T-shirts, tank tops, sweaters, blouses, sweatshirts, sweat pants, jogging suits, trousers, jeans, shorts, bibs, skirts, dresses, suspenders, jackets, coats, raincoats, ties, robes, sleepwear, pajamas, lingerie, underwear, swimwear, headwear and footwear” in the cited registration are not related to the applicant’s “fibers to be used in the manufacture of textile fabrics.” As noted in the above requirement concerning the applicant’s identification of goods, the applicant’s proposed amended identification of goods, that is “fibers to be used in the manufacture of textile fabrics” is unacceptable as indefinite. The identification of goods listed in the instant application, as filed, that is  “fabric for use in automotive interiors and in the manufacture of apparel” is related to the registrant’s goods.

 

Applicant’s fabric for use in … the manufacture of apparel” and the registrant’s clothing goods are related. For example, it is common for clothing manufacturers to promote the fabric from which articles of clothing are made from by attaching hangtags (with the fabric trademark) or identifying the fabric trademark in advertisements or promotional literature. In addition, attached are representative printouts from the Internet in which the brand of fabric is noted with articles of clothing. [Please see the enclosed attachments from Landsend.com.]  See also, In re Gerhard Horn Investments Ltd., 217 USPQ 1181, 1182 (TTAB 1983), finding “[i]t is settled law that finished clothing goods and unfinished clothing fabrics used with similar or the same marks can be productive of consumer confusion, citing In re Apparel, Inc., 151 USPQ 353  (CCPA 1966), aff'g 144 USPQ 330  (TTAB 1964); Warnaco Inc. v. Adventure Knits, Inc., 210 USPQ 307, 315 (TTAB 1981).

 

Moreover, the Trademark Trial and Appeal Board has found “there is an obvious intimate commercial relationship between piece goods and articles of apparel which may be made therefrom…” In re Mangel Stores Corporation, 165 USPQ 22 (TTAB 1970); (Upholding trademark examiner’s refusal of registration of “PRESSCOTT” for sweaters, sport and dress shirts, coats, raincoats, robes, gloves, hats, sport jackets and pants on the ground that applicant's mark so resembles the mark “PRESCOTT,” previously registered by another for cotton piece goods;  See also, E.I. du Pont de Nemours and Co. v. Sunlyra International Inc. 35 USPQ2d 1787  (TTAB 1995) (finding that applicant's "Lyra" brand children's clothing and registrant-opposer's "Lycra" brand spandex synthetic fiber must be considered related goods for purposes of  likelihood of confusion analysis. The Board found that even though “Lycra” fiber is component of fabric rather than finished clothing product, since “Lycra” brand spandex is promoted to the ultimate consumers including purchasers of children’s clothing and because “Lycra” mark often appears in a prominent fashion on finished clothing.) Here consumers are likely to believe that applicant’s articles of clothing may be made from registrant’s fabrics if similar marks are used thereon.

 

As to the similarities of the marks, the presentation of applicant’s mark in stylized form and the registered mark in typed form fails to distinguish the marks. In the actual display of its mark, the registrant is free to use a variety of stylizations.

 

To the term “ATF” the applicant has added the wording “ADVANCED TECHNOLOGY FIBERS FROM GUILFORD MILLS, INC.” The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

As to Reg. No. 0762400 for the mark GUILFORD for “Textile Fabrics, Including Woven, Knit, and the Like and Also Laminated Fabrics with Permanent or Removable Adhesive Holding Laminae Together” and the applicant’s mark, as originally filed, are similar in that they both contain the term GUILFORD. Applicant’s goods and the registrant’s goods are related in that they both involve fabrics. Moreover, it is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

As to applicant’s assertion that applicant is “unaware of any actual confusion” (Applicant’s response at page 2). The test under Section 2(d) of the Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.  TMEP §1207.01(d)(ii). 

 

As such the refusal to register under Trademark Act Section 2(d) is continued and maintained.

 

Other New Issues

 

The applicant should note the following new statutory refusals and requirements. The examining attorney regrets any inconvenience to the applicant as to the timing of these refusals/requirements.

Registration Refused- Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 1718245 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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, similarity of the goods/services, and similarity of trade channels of the goods/services.  TMEP §§1207.01 et seq. 

 

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.  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. 

 

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 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii). 

 

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).  TMEP §1207.01(b).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is 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 §1207.01(b).

 

Applying the above analysis, the applicant’s mark is ATF ADVANCED TECHNOLOGY FIBERS FROM GUILFORD MILLS, INC.  The registered mark is GUILFORD OF MAINE.  A comparison of the respective marks show that they are comprised either in whole or significant part of the term GUILFORD. According, the dominant portion of applicant’s mark is similar in sound, appearance, connotation and commercial impression to the registered mark.

 

As to the second part of the test, the goods 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). 

 

A comparison of the applicant’s goods [as identified in the original acceptable identification of goods is “fabrics for use in automotive interiors and in the manufacture of apparel” to the registrant’s “textile fabrics for use in upholstery and in the manufacture of office partition panels” show the relationship between them,  namely, that applicant’s “fabrics for use in automotive interiors” are related to the registrant’s “textile fabrics for use in upholstery” as “automotive interiors” would include such items as upholstery. As such the applicant’s fabric and the registrant’s fabric are related.

 

It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods/services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii).  The applicant’s broad identification of “fabrics for use in automotive interiors” is seen to include the registrant’s
”textile fabrics for use in upholstery.” Accordingly, the mark is likely to cause consumer confusion as to the source of the goods.

 

The similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion. Because the applicant's mark is very similar to a mark already registered for the related goods or services, it cannot be registered.

 

The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc. 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). TMEP §§1207.01(d)(i). 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.

 

Disclaimer

 

The applicant must disclaim the descriptive wording “MILLS, INC.” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording “MILLS” is merely descriptive because fabrics are typically manufactured in MILLS. Please see the enclosed representative third party registrations for related goods in which the term MILLS has been disclaimed.  As to the term “INC.”, words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity designation has no source-indicating capacity.  TMEP section 1213.02(d); See In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984);  In re Martin's Famous Pastry Shoppe, Inc., 221 USPQ 364 (TTAB 1984) aff'd on other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Because the wording “INC.” is an entity designator it must be disclaimed.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “MILLS INC.” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Ownership of Prior Registrations

 

If the applicant is the owner of Registration Nos. 1373880, 1446488, 2161152, 2010985, 2423616, 2413556, 2345017, 2451633, 2424063, 2461184, 2503714, and 2581239, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812. [See enclosed attachments].

 

Correspondence Address Has Not Been Changed

 

The examining attorney notes that the communication mailed on October 17, 2002, was submitted by a David W. Sar of Brooks, Pierce, McLendon, Humphrey & Leonard LLP.

 

As noted in TMEP Section 603.02(a),

 

Once the correspondence address is established for a particular application, it is not changed unless there is a written request by the applicant or the attorney of record to change the address. The mere transmittal of a response to an Office action bearing a new address for an applicant or an applicant's attorney does not effect a change in a correspondence address.

 

If an applicant is represented by an attorney ("A"), and another attorney ("B") later responds on behalf of the applicant and requests that correspondence be sent to B, B will be required to submit written authorization from the applicant for the requested change in correspondence address.

 

The Office will construe the following as a written request to change the correspondence address:

(1) A new power of attorney, signed by someone authorized to bind the applicant (see TMEP §602.01), is filed, even if there is no revocation of a previous power of attorney (however, the filing of an "associate power of attorney" or similar paper does not change the correspondence address); or

(2) The application is filed by a pro se applicant, and correspondence is subsequently filed that identifies the name and address of an attorney, either on the correspondence itself or on the transmittal letter that accompanies the correspondence, even if no power of attorney is filed.

In these two situations, the Office will change the correspondence address to the address of the new attorney. In all other situations, a written request to change the correspondence address, signed by the applicant, is required.

 

Because the applicant’s situation is not the same as either 1 or 2 above, a written request to change the correspondence address, signed by the applicant, is required. Therefore, the correspondence address has not been changed.

Status of Trademark Applications

 

For future reference, please note that current status and status date information is available, via the World Wide Web, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed through the Office's web site at: http://tarr.uspto.gov.   If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center at (703) 308-9000 and request a status check.

 

For inquiries or questions about this Office Action, please contact the assigned examining attorney.

 

 

/Monique C. Miller/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 228

(703) 746-8108(FAX)

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.