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  76/219441

 

This letter responds to the applicant’s communication filed on August 11, 2003.   The examining attorney acknowledges  the applicant’s arguments as to the 2(e)(2) refusal and accordingly said refusal has been WITHDRAWN.   For reasons that follow, the section 2(d) refusal is maintained and made FINAL.

 

SECTION 2(D) REFUSAL – FINAL 

 

In the initial office action (as to the statement of use) dated February 10, 2003, the examining attorney refused registration under section 2(d) of the Trademark Act for the applicant’s mark, TRELLEBORG WHEEL SYSTEMS ,because it was confusingly similar to Reg. No. 1884641, TRELLEBORG, for highly related if not identical goods.

 

By way of response, the applicant notes that the registrant is a related company, the parent company of the applicant.   The applicant notes that it is not interested in an assignment but “would prefer to offer the Examiner a consent to use and registration, if the examiner would accept such a document.”   The examiner would accept such a document, provided it was satisfactory, i.e. not a “naked consent”.  A consent agreement that is not merely a “naked” consent typically details reasons why no likelihood of confusion exists and/or arrangements undertaken by the parties to avoid confusing the public. In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984).  The Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight, and that the Office should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other factors clearly dictate a finding of likelihood of confusion. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988).  1207.01(d)(viii).

 

Applicant may alternatively, indicate that applicant is a wholly owned subsidiary of the registrant, as this would show unity of control so as to constitute a single source in the marketplace.  TMEP section 1201.07(a)(i).

 

Applicant offers no argument that the marks are dissimilar or that the goods or channels of trade are unrelated.   Accordingly, for the reasons recited in the previous office action, the 2(d) refusal is maintained and made FINAL. 

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(703) 308-9115x209

 

 

 

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 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.