Offc Action Outgoing

TIVOLI

SWANK, INC.

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/282491

APPLICANT: SWANK, INC.

CORRESPONDENT ADDRESS:

PAUL FIELDS

DARBY & DARBY P C

805 3RD AVE

NEW YORK NY 10022-7513

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

ecom108@uspto.gov

MARK: TIVOLI

CORRESPONDENT’S REFERENCE/DOCKET NO: 7335/3H741

CORRESPONDENT EMAIL ADDRESS:

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.

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 76/282491

Since the prior filed application is now registered, this application is removed from suspension for the following action.

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/services, so resembles the mark in U.S. Registration No. 2,729,796 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. 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 (C.C.P.A. 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). TMEP §§1207.01 et seq.

The marks are identical, the arbitrary term TIVOLI, applied to identical goods, jewelry. For these reasons, likelihood of confusion would arise between identical marks used on identical goods, under the provisions of Section 2(d) of the Trademark Act.

/Henry S. Zak/

Examining Attorney

Law Office 108

(703)308-9108 x 149

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.