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. 

 

Serial Number  76/179324

 

Action on this application had been suspended pending the disposition of a cancellation proceeding against the cited registrant.   It appears that the cancellation has been terminated.  Accordingly, the examining attorney determines as follows. 

 

Refusal Maintained

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1718245 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.  The applicant’s mark is the stylized  “GTT GILFORD’S TECHNICAL TEXTILES” for use in the manufacture of medical, industrial, outdoor and specialty products, but not biology and chemistry instruments and apparatus.  The registrant’s referenced mark is “GILFORD OF MAINE” for textile fabrics for use in commercial and office upholstery and in the manufacture of office partition panels.  The examining attorney’s position is that confusion as to the source of origin or sponsorship is extremely likely if the applicant’s proposed mark is allowed to register.

 

The applicant presents several arguments in favor of registration.  Among them are that the marks create different commercial impressions and the applicant has prior registrations containing the same term.  The examining attorney has carefully considered the applicant’s arguments, but has found them unpersuasive.  For the reasons below, the refusal under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) is maintained and made FINAL.

 

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 in their entirety 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).

 

In accordance with these decisions, as cited in the earlier actions, the examining attorney considered the applicant’s mark in its entirety when making the likelihood of confusion comparison.  The applicant’s mark is the typed two-term mark, “GTT GILFORD’S TECHNICAL TEXTILES.” The registrant’s mark is the typed term, “GILFORD’S OF MAINE.”  The applicant’s mark contains the same source identifying term “GILFORD’S.”  The only differences are the applicant’s addition of “GTT” and “TECHINCAL TEXTILES” and the registrant’s “OF MAINE.”  It is well established that the mere addition of terms 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 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 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").  When 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, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted). 

 

It is well settled that in some circumstances, it is appropriate to recognize that one component of a particular mark may, for some reason, have more significance than other components in determining the commercial impression which is generated by the mark.  In re National Data Corp.,  753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).  Although the determination of whether or not confusion is likely must be based on a comparison of the marks in their entireties, the dominance of such a significant element must be taken into account in resolving this issue.  Ceccato v. Manifattura Lane Gaetano Morzotto Figli S.p.A., 32 USPQ 1192 (TTAB 1994).  The geographic term “OF MAINE” in the registrant’s mark is less significance than “GILFORD’S.” 

 

The applicant argues the addition of “GTT” and “TECHNICAL TEXTILES” further distinguish the marks.  However, 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).  With the common use of the term “GILFORD’S,” it appears that the marks are from the same source.  It should be noted that the issue is confusion as to the source of those goods or services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq. 

 

The applicant argues that it owns prior registrations that share the common term.  However, prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office.  Each case is decided on its own facts, and each mark stands on its own merits.  AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).

 

Since the marks themselves are considered similar, the examination now turns to the relationship between the goods of the parties.  The applicant’s mark is for fabric to be used in the manufacture of medical, industrial, outdoor and specialty products, but not biology and chemistry instruments and apparatus and the registrant’s mark is for textile fabrics for use in commercial and office upholstery and in the manufacture of office partition panels. 

 

However, it is well established that the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If the application or cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application and registration encompass all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. 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 (CCPA 1973); In re Elbaum, 211 USPQ 639 (TTAB 1981).  The applicant’s broad identification of fabric to be used in the manufacture of industrial products is seen to include fabric to be used in the manufacture of industrial or commercial upholstery.  Accordingly, the goods are considered to be identical and travel in the same channels of trade.

 

If the goods 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.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (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).

   

Finally, it should be noted that 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).  Accordingly, it is the examining attorney’s opinion that the marks are similar, that the goods are related, and that a there is a likelihood of consumer confusion if the two marks are used contemporaneously.

 

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. Section 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. Section 2.65(a).

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

(571) 272-9108 (Fax)

(703) 305-8747 (Status)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.