UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/314507
APPLICANT: Arai Helmet, Ltd.
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CORRESPONDENT ADDRESS: MICHAEL S. CULVER OLIFF & BERRIDGE, PLC PO BOX 19928 ALEXANDRIA VA 22320-0928
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom109@uspto.gov
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MARK: ARIEL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 110456
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 76/314507
Second Action
On November 21, 2001, action on this application was suspended pending the disposition of Application Serial No. 76314507. The referenced application has matured into a registration. Therefore, registration is refused as follows.
REFUSAL OF REGISTRATION: LIKELIHOOD OF CONFUSION-SECTION 2(d)
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. 2616754 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
Reg. No. 2616754 is ARRIEL (typed) for “aircraft vehicles, namely, helicopters, airplanes and gliders; land motor vehicles, namely automobiles, trucks and motorcycles.”
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.
A. Similarity of the Marks
The applicant’s mark is ARIEL; the registrant’s mark is ARRIEL. The marks are essentially phonetic equivalents. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).
B. Similarity of the Goods
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 applicant’s goods include “motorcycle helmets.” The registrant’s goods include motorcycles. Motorcycle helmets are often found under the same mark as motorcycles.
RESPONSE
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.
/Kim Saito/
Examining Attorney, Law Office 109
703-308-9109 ext. 158
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.