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. 

 

On May 16, 2002, action on this application was suspended pending the disposition of Application Serial Nos. 76/198488 and 75/928545.  The referenced applications have matured into registrations.  Therefore, this application is removed from suspension and examination is resumed. 

 

Please note that this application has been reassigned to the undersigned examining attorney.

 

NEW REFUSALS:  LIKELIHOOD OF CONFUSION – SECTION 2(d)

 

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 or services, so resembles the marks in U.S. Registration Nos. 2569080 and 2546809 (owned by the same registrant) as to be likely to cause confusion, 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 this case, the applicant’s mark is “WALDEN,” and the marks in the above-cited registrations are “WALDEN EXPRESS” and “WALDEN TOO,” respectively.  These marks are confusingly similar because the dominant portion of each mark is identical to the applicant’s entire mark.  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).  As a result, the marks create a very similar commercial impression. 

 

The applicant’s services are “Production and distribution of motion pictures;  production and distribution of television programs for others; music production services; providing interactive online entertainment and educational information on subjects of general interest to children and families.”  The services in the first above-cited registration are “retail services featuring books, magazines, CD-Roms, pre-recorded video cassettes, and music in various forms.”  The services in the second cited registration are “retail bookstore services in the field of books, magazines, CD-Roms, pre-recorded videocassettes, and music in various forms.” 

 

The applicant’s services are closely related to the registrant’s services because the applicant’s online services are broad enough to include the registrant’s services.  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., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s services is very broad, it is presumed that the application encompasses all services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii). 

 

Taken together, the close similarity of the marks and the close relationship of the services necessitate that registration for the proposed mark be 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.

 

CONTINUED REFUSALS:  LIKELIHOOD OF CONFUSION – SECTION 2(d)

 

In prior office actions, the then-assigned examiner refused registration based on U.S. Registration Nos. 2459914, 2057201, 1702632 and 1482311.  These refusals are continued.

 

DECLARATION

 

The original application did not include a signed declaration.  In response to this issue, the applicant submitted a signed declaration but it is incomplete.  In addition to the signed declaration, the applicant must submit the following statement when a declaration is submitted after the filing of the original application:  

 

 

“The applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 37 CFR Sections 2.34(a)(1)(i), (a)(2)(i), (a)(3)(i) and (a)(4)(i).

 

As such, the requirement for submitting this statement is continued.

 

 

/Susan Stiglitz/

Trademark Attorney

Law Office 103

703-308-9103, ext. 233

703-746-8103  (fax)

ecom103@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 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.