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  76/248948

 

            This application has been reassigned to the undersigned examining attorney.

 

            On October 22, 2001, the applicant was notified regarding prior pending Application Serial No. 76278456. Application Serial No. 76278456 matured into U.S. Registration No. 2790203.  As a result, the following refusal is now issued.

 

            Statutory Refusal: 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 mark in U.S. Registration No. 76278456 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

            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).

 

            A.            The Marks are Identical

           

            Applicant’s mark is EMPIRE. The registrant’s mark is EMPIRE.  These marks are identical because they both contain the term EMPIRE.

 

            B.            The Goods are Related

 

            Applicant intends to sell cigarettes. The registrant sells tobacco goods.  These goods are related because applicant’s goods and the registrant’s goods are tobacco products.  Applicant could be perceived as the source of this registrant’s goods; this registrant could be perceived as the source of applicant’s goods.      

 

            C.            Consumer Confusion is Likely

 

            The marks are similar and the goods are related.  The examining attorney concludes that consumers encountering applicant's mark and the cited mark in the marketplace are likely to believe mistakenly that the goods derive from a common source.  Registration must be refused under Section 2(d) of the Trademark Act.

 

            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.

 

            Responding to this Office Action.

 

            No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

            In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

            If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.          

ADDITIONAL CUSTOMER INFORMATION

 

· NOTICE FOR APPLICANT’S FILING IN INTERNATIONAL CLASS 42

 

Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of goods and services divided prior International Class 42 into four service mark classes.  Information about revised International Class 42 and new International Classes 43, 44, and 45 is available at www.gov.uspto.report/web/offices/tac/notices/notices.htm.

 

All applications filed on or after January 1, 2002, must comply with the new classification schedule.  For applications filed before January 1, 2002, the new classification schedule is optional.  Applicants opting to amend to the new schedule must advise the assigned Examining Attorney.

 

 · CHANGE OF CORRESPONDENCE ADDRESS

 

Applicants may now file changes of correspondence via a new form on TEAS.   Address changes may be performed  on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form, which is available online at: www.gov.uspto.report/web/trademarks/tmchangeaddress.htm.

 

· NEW ELECTRONIC RESPONSE TO OFFICE ACTION FORM

 

On April 30, 2002, the Trademark Operation posted an electronic Response to Office Action form on the TEAS (Trademark Electronic Application System) web site.  By using this new web-based TEAS form, customers can (1) respond to an Office Action based on an application or Statement of Use; or (2) pay an additional fee after a phone call from the Office, i.e., to enable an Examiner's  Amendment.  Upon receipt of the electronically-submitted response, the prosecution history will automatically be updated to show "TEAS Response to Office Action received."  To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/oa200>>.  NOTE: This form cannot be used to respond to any actions from either the Intent-to-Use (ITU) or Post-Registration areas. Forms for that purpose will be available in the future.

 

· NEW ELECTRONIC PRELIMINARY AMENDMENT FORM

 

On April 30, 2002, the Trademark Operation posted an electronic Preliminary Amendment form on the TEAS (Trademark Electronic Application System) web site.  By using this new web-based TEAS form, customers can submit a Preliminary Amendment prior to examination.  Upon receipt of the electronically-submitted preliminary amendment, the prosecution history will automatically be updated to show "TEAS Preliminary Amendment received."  To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/pa200>>.  NOTE: This form should ONLY be used if an already-filed application has not yet been examined by the Office.

 

/John D. Dalier/

Trademark Examing Attorney

Law Office 105

(703) 308-9105, ext. 131

FAX (703) 746-3021

ecom105@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.