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  76/223978

 

This letter responds to applicant’s communication filed on October 22, 2003. 

 

Upon further review of the file, the examining attorney has determined the following:

 

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 marks in U.S. Registration Nos. 1148869 and 2163733 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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 (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 the first stage of the analysis, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  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 applicant applied to register a configuration of a guitar for "guitars."  The registered mark is configurations of guitar heads ' for "electric guitars and electric bass guitars" and “electric guitars and electric bass guitars, and necks for electric guitars and electric bass guitars.”  The examining attorney must look at the marks in their entireties under Section 2(d), 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 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The guitar head of applicant’s mark is highly similar to the unique head of the registered marks.  Thus applicant's mark is confusingly similar to the registered mark. 

 

If the marks of the respective parties are highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  The goods 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 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).  However, in this instance, the applicant's goods are identical to the registrant's goods.  Applicant's goods and registrant's goods are both guitars.  Therefore the examining attorney refuses registration of the applicant's mark under Section 2(d), 15 U.S.C. 1052 (d), because the mark is highly similar to two registered mark and the goods are also identical.

 

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.

 

Applicant has attempted to overcome the configuration refusal and ornamentation refusal issued by the prior examining attorney with a claim of acquired distinctiveness.  The burden of proving that a mark has acquired distinctiveness is on applicant.  See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).  Applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.  Allegations of sales and advertising expenditures cannot per se establish that a term has acquired significance as a mark.  It is necessary to examine the advertising material to determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528 (TTAB 1983); Bliss & Laughlin Industries Inc. v. Brookstone Co., 209 USPQ 688 (TTAB 1981).  Applicant’s current evidence is merely various excerpts claiming the overall significance of the guitar design along with the applicant’s declaration stating its long and extensive use of the design element.  Applicant must provide evidence that includes specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979).  This Office will decide each case on its own merits.  Applicant is also advised that the evidence must support that the mark has acquired distinctiveness for not only the body of the guitar, but also for the fanciful features that are on the guitar.

 

 

 

/Won T. Oh/

Law Office 114

(703) 308 - 9114 x-176

email: won.oh@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 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.