Offc Action Outgoing

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  76/174679

 

This application was suspended pending Serial No. 76/135576.  The prior pending application has been abandoned.  As such, the refusal of registration under Section 2(d) must be continued and made FINAL.

 

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. 1002841 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§ 1207.01 et seq.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, cause confusion, or to cause mistake or to deceive.  TMEP §§ 1207.01 et seq.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 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.  Id.  In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services.  Federal Food, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

 

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. DuPont, supra.  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.  Id.; 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).

 

Applicant's mark is the typed mark "TURNING POINT" for “clothing, namely, shirts, shorts and socks.”  The registered mark is the typed mark "TURNING POINT" for “textile fabrics in the piece composed of wool or cotton or blends of wool and cotton and man-made fibers.”  [Reg. No. 1002841].

 

Applying the above analysis, the marks are identical in all respects.

 

Where, as here, the marks of the respective parties are extremely similar or identical, 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.  In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981).  Rather, in such a situation, it is only necessary that  there be a “viable relationship” between the goods or services in order to  support a holding of likelihood of confusion.  Id.; see also 3 J. McCarthy,  McCarthy on Trademarks and Unfair Competition, Section 23.20.1 at page 23-55 (4th ed. 1999) ("Thus, the greater the similarity in the marks, the lesser the similarity required in the goods or  services of the parties to support a finding of likely confusion").

 

As to the second half of the test, the applicant’s apparel goods are closely related to registrant’s fabric goods.

 

A number of cases have held that marks used in connection with fabrics for clothing are often used in the promotion of the finished apparel and thus, fabrics and apparel goods are so related that the marketing thereof under the same or similar marks would be likely to cause confusion in trade.  See, e.g., Vanity Fair Mills, Inc. v. Pedigree Fabrics, Inc., 73 USPQ 438, 439 (CCPA 1947) (“under most circumstances, confusion would grow out of the concurrent use of similar trade marks on [fabric piece goods and finished clothing]”; E.I. du Pont de Nemours and Co. v. Sunlyra International Inc., 35 USPQ2d 1787, 1790 (TTAB 1995) (synthetic fibers and children's clothing found to be related goods); In re Crompton Company, Inc., 221 USPQ 471 (TTAB 1983) (fabric and finished clothing found to be closely related); Warnaco Inc. v. Adventure Knits, Inc., 210 USPQ 307, 315 (TTAB 1981); In re Mangel Stores Corp., 165 USPQ 22 (TTAB 1970) ("there is an obvious intimate commercial relationship between piece goods and articles of apparel which may be made therefrom"); In re Apparel, 144 USPQ 330 (TTAB 1964), aff'd, 151 USPQ 353 (CCPA 1966); In re Regal Garment Corp., 122 USPQ 397 (TTAB 1959) ("common practice of fabric manufacturers supplying tags for use by garment manufacturers in connection with finished apparel").

 

As evidence of the marketing practice in the clothing industry to identify the fabric from which clothing items are made, including identifying the marks associated with such fabrics, in the promotion of the finished clothing items, the examining attorney refers applicant to the enclosed samples of fabric hang tags which were affixed to the finished articles of clothing, copies of excerpt pages from the catalogs of EARLYWINTERâ and NRSâ, and excerpt advertisement pages from BAZAARâ magazine.

 

Copies of 8 representative third party registrations based on use in commerce wherein the registrant listed both fabrics for clothing and clothing items are enclosed.  These third party registrations indicate that consumers are accustomed to seeing both fabric goods and clothing goods emanate from a single source under a single mark.  The Board has held that these use-based third-party registrations have probative value in serving to suggest that the goods listed therein (which are essentially the same types of goods involved here) are of a kind which may emanate from a single source.  See In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1211 (TTAB 1999); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988).

 

The applicant argues that the products are sold through different channels of trade and purchased by a difference class of purchasers.  However, as noted above, "trade practices in the clothing industry often result in a buyer of finished clothing items coming into contact with the mark of the fabric from which the clothing items were made [and thus purchasers] would be likely to ascribe a common origin to fabric and finished clothing items made from such fabric when sold under the same or similar marks".  In re Crompton Company, Inc., supra, 221 USPQ at 472.   

 

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). 

 

Based on the above, the applicant’s clothing goods must be considered closely related to registrant’s fabric goods.   

 

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 which is totally dissimilar to trademarks already being used.  See, e.g., In re Shell Oil Co., 992 F.2d 1204, 1209, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993); Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); Recot Inc. v. Becton, 56 USPQ2d 1859, 1862 (TTAB 2000); Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1915 (TTAB 2000) (“[O]ne who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril, and any doubt as to the similarity of the marks must be resolved against him”); Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191, 200-01 (TTAB 1979); see also Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181, 6 USPQ2d  2034, 2038 (9th Cir. 1988) ("A newcomer who has the 'entire material universe' or, stated in other terms, 'a whole dictionary full of words, an encyclopedia full of proper names, or a world atlas full of place names,' from which it could have chosen its name and mark, has the duty to avoid the use of a mark similar to an established one.").

             

In conclusion, since the marks are identical and the goods are closely related, there is a likelihood of confusion and registration must be refused.

 

OPTIONS

 

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 Appeal Board.  37 C.F.R. §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. §2.65(a).

 

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 198

fax: (703) 746-8108

douglas.lee4@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.