Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/240814

 

A petition to revive the above referenced application was granted.  Applicant has submitted a document entitled “SETTLEMENT AGREEMENT.”  The agreement is signed and witnessed, but there is no date indicated on the agreement nor is it notarized.  Moreover, applicant’s agreement does not address the cited registration owned by Maxim’s Limited Corporation.  Consequently, the refusal under Section 2(d) is continued.

Settlement Agreement Invalid

After reviewing the agreement, the examining attorney has concluded that the agreement is nothing more than a “naked” consent.  Neither applicant nor registrant has executed an agreement that addresses the issue of likelihood of confusion for the particular marks at issue.  Moreover, registrant does not indicate that it has granted applicant permission to register the mark appearing in Serial No. 76/240814.  Applicant is cautioned that it must responsibly present documents to the Office.  See 37 C.F.R. §10.18.

 

If applicant wishes to submit a proper consent agreement from the registrant consenting to the registration of the mark appearing in Serial No. 76/240814, the refusal applicable to Registration No. 2,859,143 will be reconsidered.  Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).  In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).

 

Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion.  See In re Mastic, 829 F.2d 1114, 1115, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987) (relying on the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (C.C.P.A. 1973)).

 

Section 2(d) Refusal – Continued (Both Registrations)

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because of a likelihood of confusion between the applicant's mark and U.S. Registration Nos. 1,983,290 and 2,859,143.  The refusal applicable to the cited registrations is continued.

Similarity of the Marks 

The issue in a likelihood of confusion case is whether the marks create the same overall impression.  Visual Information Institute, Inc. v. Vicuna 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).  In this case, the applicant’s mark and the registrants’ marks are very similar in appearance and are likely to have the same connotation and commercial impression. 

When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  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). Because the marks are very similar in appearance, connotation and commercial impression, confusion as to source is likely. 

Similarity of the Goods 

The presumption under Trademark Act Section 7(b), 15 U.S.C. Section 1057(b), that the registrant is the owner of the mark, extends to all goods identified in the registration. The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980).  It is presumed that the registrant operates in the same channels of trade and reaches the same classes of purchasers as the applicant.  Because there are no restrictions in the registrants’ identifications as to their trade channels, the registrants will occupy all trade channels, including the same types where the applicant’s goods are sold.   

As stated in the initial office action, 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). 

 

Applicant submitted a copy of the registrant’s website to illustrate that the goods travel in different channels of commerce.  There are two problems with the submission of the website.  First, an applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods.  See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). TMEP Section 1207.01(a)(iii).  Secondly, likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Because the  identification of the registrant’s goods does not restrict the trade channels to “boating consumers,” it is presumed that the registration encompasses all goods of the type described, and, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).

 

The decisions in the clothing field have held many different types of apparel to be related under Section 2(d).  Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).  The Section 2(d) refusal is continued.

 

 

 

 

 

 

 

/Christopher L. Buongiorno/

Law Office 102

(571) 272-9251

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.