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  76/213867

 

The Office has reassigned this application to the undersigned examining attorney.

 

On September 14, 2001, action on this application was suspended pending the disposition of Application Serial No. 75-768818.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.  Additionally, the refusal to register based on U.S. Registration No. 1852137 is continued.

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §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. 2568914 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

Already registered is the mark LOTUS SPORT and design for CLOTHING, NAMELY, JACKET, FLEECE TOPS, POLO SHIRTS, RAIN COATS, SHIRTS, BASEBALL CAPS, T-SHIRTS, SWEATSHIRTS; NONE OF THE AFORESAID GOOD BEING CLOTHING FOR BABIES OR BEING SPECIALLY ADAPTED FOR HOSPITAL OR MEDICAL USE AND NONE OF THE AFORESAID GOODS COMPRISING PROTECTIVE CLOTHING OR CLOTHING FOR WORKERS.  The applicant’s mark is LOTUS DESIGNS for clothing, headwear and footwear designed specifically for paddling and kayaking sporting activities to keep the wearer dry or comfortable when wet, namely, pants, shirts, jackets, hats and shoes.

 

Comparison of the Marks

 

The dominant portions of the marks is LOTUS.  Both applicant and registrant use LOTUS with descriptive terms. The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii). 

 

While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Disclaimed matter is typically less significant or less dominant.  In this case consumers would believe that LOTUS SPORTS and LOTUS DESIGNS are LOTUS lines of clothing emanating from the same source.  The marks are confusingly similar.

 

Comparison of the Goods

 

Both applicant and registrant use the marks for jackets, shirts and hats.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. 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 (C.C.P.A. 1973).  Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

The marks are confusingly similar and the goods are closely related.  Consumers encountering them marks on the goods would come to the mistaken conclusion that the goods emanate from the same source.  Accordingly, registration is refused.

 

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.

 

 

 

 

/Chrisie Brightmire King/

Trademark Attorney

Law Office 103

(703) 534-4197

 

 

 

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.