UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/158420
APPLICANT: MAG INSTRUMENT, INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MAG
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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.
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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 76/158420
The Office has temporarily reassigned this application to the undersigned trademark examining attorney.
Registration previously was refused under Section 2(d) on the basis that the proposed mark is confusingly similar to the mark in Registration No. 2198795. Two-prior filed applications (Application Nos. 75382020 and 75456742) were cited as potential bars to registration under Section 2(d). The application was then suspended pending a cancellation proceeding regarding Registration No. 2198795. The proceeding was dismissed.
The examiner notes that Application No. 75456742 has been abandoned. Thus, the citation of this application is withdrawn.
Meanwhile, application No. 75382020 has matured to registration. Thus, a new refusal under Section 2(d) is issued below.
Registration of the proposed mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 3051911 and 2198795. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration(s).
Taking into account the relevant DuPont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
Applicant’s mark is “MAG.”
The mark in Registration No. 3051911 is “MAG.”
The mark in Registration No. 2198795 is “E-MAG.”
Applicant’s mark is identical to the mark in Registration No. 3051911.
Meanwhile, applicant has merely deleted the “E” from the registered mark in Registration No. 2198795. The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.
In this case, applicant’s goods are clothing, namely, shirts, sweatshirts, hats, pants, and shorts.
The goods in Registration No. 3051911 are wearing apparel, namely, jackets, skirts, pants, camisoles, vests, dresses, tank tops, blazers, tops, shorts, shirts, sweaters and t-shirts. Both applicant and registrant provide a variety of clothing goods, including pants, shorts, and shirts. Thus, the goods are highly related and even appear identical.
Similarly the goods in Registration No. 2198795 are shorts and jackets. Applicant’s shorts appear identical to registrant’s shorts.
Additionally, many entities provide both the type of goods/services identified in the registration(s) as well as those identified in the application. In this regard, attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant(s) in this case. These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
Accordingly, registration must be refused because the average purchaser would be likely to conclude that applicant’s goods/services and those in the cited registration(s) emanate from a common source.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Applicant submitted a claim of ownership of several prior registrations. This claim included Registration Nos. 1222744, 1713857, 2182187, and 2276776, which have been cancelled since the time of application. In light of the cancellations, applicant’s claim of ownership with respect to these particular applications will not be printed on any registration which may issue from this application. Only claims of ownership of live registrations are printed. 37 C.F.R. §2.36; TMEP §812.
However, it appears that applicant is now also the owner of Registration Nos. 2575768 and 3105299. If so, applicant must add these registrations to the claim of ownership. 37 C.F.R. §2.36; TMEP §812. Please also note that applicant need only list these registrations and the wording “and others” in its claim. Please note that “and others” must be included since applicant owns the many other registrations it previously identified. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 2575768 , 3105299, and others.
The Trademark Rules pertaining to drawings were amended on November 2, 2003. For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003. TMEP §807.03(i).
Applicant may add the following standard character claim to the record: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
Applicant must specify whether the wording “MAG” has any significance in the clothing trade or industry or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
Trademark Rule 2.61(b) states, “The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.” The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant’s failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).
If applicant has any questions, please do not hesitate to contact the undersigned.
/Maureen Dall/
Maureen L. Dall
Trademark Attorney, Law Office 117
United States Patent and Trademark Office
Phone: 571-272-9714
HOW TO RESPOND TO THIS OFFICE ACTION:
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.