UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/154342
APPLICANT: Charles D. Owen Mfg. Co.
|
|
CORRESPONDENT ADDRESS: JOHN L SULLIVAN JR ALSTON & BIRD LLP POST OFFICE DRAWER 34009 CHARLOTTE NORTH CAROLINA 28234
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
MARK: AMERICAN TRADITION
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 033697/20557
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/154342
Upon maturation of prior-filed U.S. Application Serial No. 76/061950 into a registration, the examining attorney has determined the following.
A. 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 No. 2,815,302 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
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 applicant’s mark is AMERICAN TRADITION, while the registrant’s mark is AMERICAN TRADITIONS. The marks are virtually identical in all respects. Moreover, the applicant’s goods are bedspreads, blankets and throws, while the registrant’s goods are comforters, quilts, blankets, bedspreads, bed covers, bed sheets, bed skirts, and various other related goods. The goods are, in part, identical. That is, both parties’ goods include bedspreads and blankets. The throws are closely related to the registrant’s goods because the same party commonly markets and sells throws and the remaining goods together under the same mark. See the applicant’s own identification of goods, which includes bed spreads, blankets and throws. If the goods or services of the respective parties are 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. Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d 1698 (Fed. Cir. 1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
Based on the foregoing, the goods are related in a manner that could give rise to a mistaken belief that they come from the same source. Therefore, a likelihood of confusion exists between the marks.
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).
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 has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Regards,
/Scott M. Oslick/
Trademark Examining Attorney
Law Office 108
(703) 308-9108 x117 (Telephone)
(703) 746-8108 (Fax - Official 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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.