UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/227720
APPLICANT: BI PROPERTIES I INC
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CORRESPONDENT ADDRESS: WANDA HOWARD BI PROPERTIES I INC 3330 W FRIENDLY AVE GREENSBORO NC 27410-4806
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom102@uspto.gov
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MARK: NANO-TEX INTELLIGENT FABRICS. BETTER LIV ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/227720
On March 18, 2002, action on this application was suspended pending the disposition of Application Serial No. 75/903755. The referenced application has matured into a registration. Therefore, registration is refused as follows.
Refusal of Registration: Likelihood of Confusion
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. 2700784, as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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. In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.
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). 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 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). 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 section 1207.01(b).
The second step requires that the examining attorney 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 present case, applicant seeks to register NANO-TEX INTELLIGENT FABRICS. BETTER LIVING for fibers for textile, yarns for textile, and textile fabrics for use in the manufacture of clothing; textile fabrics for use in the manufacture of furnishings for home, industrial and commercial use; and upholstery fabrics for home, industrial and commercial use.”
The registered mark is the highly similar THE INTELLIGENT YARN for “core-spun yarn.” Both applicant and registrant use the term INTELLIGENT. The definitions of “intelligent” include
n·tel·li·gent (în-tèl¹e-jent) adjective
1. Having intelligence.
2. Having a high degree of intelligence; mentally acute.
3. Showing sound judgment and rationality: an intelligent decision; an intelligent solution to the budget problem.
4. Appealing to the intellect; intellectual: a film with witty and intelligent dialogue.
5. Computer Science. Having certain data storage and processing capabilities: an intelligent terminal; intelligent peripherals.[1]
As indicated by the definitions above, both applicant and registrant use the term INTELLIGENT in an incongruous manner to describe fabric-related goods. The general impression retained by the average consumer would be the term "INTELLIGENT" used in such an incongruous manner for yarns or for goods related to yarn.
The highly similar marks are used for some of the same goods and for closely related 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 that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Thus, for the reasons stated above, the examining attorney must refuse registration under Trademark Act Section 2(d).
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.
Miscellany
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Rudy Singleton/
Examining Attorney, Law Office 102
(703) 308-9102 ext. 266
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.