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  76/295633

 

On September 03, 2002, action on this application was suspended pending the disposition of Application Serial No. 75/775879.  The referenced application has been abandoned and is withdrawn as a potential ground for refusal of registration under Trademark Act Section 2(d).  The assigned examining attorney has reviewed the referenced application and determined the following.

Refusal: Likelihood of Confusion

 

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, so resembles the marks in U.S. Registration Nos. 1,639,081 and 2,652, 376 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 examiner 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 examiner 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 registered marks are AMERICAN PIE in typed-form and BYE BYE MISS AMERICAN PIE in typed-form.  The proposed mark is AMERICAN PIE in typed-form.  If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

The registrant’s goods are identified as "clothing, namely t-shirts" and "clothing, namely shirts, hats, jackets and scarves."  The applicant’s goods are "clothing, namely, men's, women's and children's shirts, pants, jackets, shorts, sweatshirts, sweatbands, sun visors, and hats, available at restaurant/bar locations and through an Internet website and mail order catalogs."

 

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., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods is broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, 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).  TMEP §1207.01(a)(iii). 

 

It is likely that purchasers familiar with AMERICAN PIE or BYE BYE MISS AMERICAN PIE used on the registrant’s clothing will believe that similar clothing items from AMERICAN PIE emanate from the same source.  The examining attorney must also consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods are related to the applicant’s goods under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v).  

 

The registration is denied because the similarities between the marks are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).  For the foregoing reasons, registration is refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

Response After Refusal of Registration

 

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. 

Response to Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised and should simply set forth the required changes or statements and request that the Office enters them.  The applicant must sign the response. 

 

If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney. 

 

 

                                                                        //Richard S. Donnell//

Trademark Examining Attorney

Law Office 106

Telephone: 703.308.9106 x166

Fax: 703.746.8106

Email: ecom106@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.