UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/361488
APPLICANT: Rockler Companies, Inc.
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CORRESPONDENT ADDRESS: JAMES A. WAHL MACKALL, CROUNSE & MOORE, PLC 1400 AT&T TOWER 901 MARQUETTE AVENUE MINNEAPOLIS, MN 55402-2859 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: CLAMP-IT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 86030-29
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 76/361488
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. 2776073, 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.
Here, where the sole feature of applicant’s mark is CLAMP-IT and T. CLAMPIT is the a predominant feature of applicant’s mark as well as the sole word feature of registrant’s mark, the marks at issue create the same commercial impression because they look, appear and sound alike. Thus, where the goods are hands tools that may very well be used in conjunction with each other the goods are related and confusion is likely between the marks at issue pursuant to Section 2(d) of the Act. Please note, this registration resulted from previously noted Serial No. 76-037805.
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
/Edward Nelson/
Examining Attorney
Law Office 106
(703) 308-9106, ext. 197
(703) 308-8106 (fax no.)
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.