UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/232371
APPLICANT: LANCER PARTNERSHIP, LTD.
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CORRESPONDENT ADDRESS: CHRISTOPHER L. MAKAY LAW OFFICES OF CHRISTOPHER L. MAKAY MILAM BUILDING 115 E TRAVIS ST SAN ANTONIO TX 78205-1611 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom116@uspto.gov
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MARK: PUR(E)
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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 76/232371
This letter responds to the applicant’s communication filed on April 14, 2003.
The proposed amendment to seek registration on the Supplemental Register is unacceptable. An application filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), on the basis of a bona fide intent to use the mark in commerce, may not be amended to the Supplemental Register until the applicant files an acceptable amendment to allege use under 37 C.F.R. §2.76 or an acceptable statement of use under 37 C.F.R. §2.88. 37 C.F.R. §2.47(c); TMEP §§815.02, 816.02 and 1102.03.
If the applicant timely files an acceptable amendment to allege use or statement of use and an amendment to the Supplemental Register, the effective filing date of the application is the date on which the amendment to allege use or statement of use was filed. 37 C.F.R. §2.75(b); TMEP §§206.01, 816.02 and 1102.03. A new search of the Office records for references would be done at that time.
Accordingly, the refusal under Trademark Act Section 2(e) is hereby MAINTAINED. Furthermore under these circumstances, the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. 37 C.F.R. §2.75(b); TMEP §1102.03.
Furthermore, as to a likelihood of confusion with the marks in U.S. Registration Nos. 2466359 and 1756655, the examining attorney is not persuaded by applicant’s arguments which essentially subject the marks to a side-by-side comparison. This refusal is MAINTAINED. 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 §1207.01(b).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Nora Buchanan Will/
Trademark Attorney, Law Office 116
ph 703-306-7915/ fax 703-746-8116
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.