Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/155181

 

Since the prior filed application is now registered, this file is removed from suspension for the following action. Based on the differences in the overall marks and goods, it is believed that the registration of the term MOBILS for footwear will not create likelihood of confusion between this mark and the mark of the applicant.

 

However, the refusal to register under the provisions of Section 2(d)  based on Registration no. 2,682,364 is maintained, on grounds of similarity of the marks and the goods.

 

The arguments and supporting case law in prior Office actions are incorporated in their entirety into this letter.

 

The marks are highly similar in wording: MOBILE UNIFORM MOBILE. Applicant’s addition of the descriptive , disclaimed term “uniform” does not substantially alter the similar meanings of the marks.

 

Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or 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 to all potential customers.  TMEP §1207.01(a)(iii).

 

Therefore, the fact that the registrant uses the mark for uniforms composed of various clothing items  does not lessen similarity of the goods. Each party is using a similar mark on identical clothing items, such as pant, shirts and jackets.

 

For these reasons likelihood of confusion as to source would arise.

 

 

 

Henry S. Zak

/Henry S. Zak/

Examining Attorney

Law Office 117

(571) 272-9354

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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