Offc Action Outgoing

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  76/370553

 

The examining attorney has carefully reviewed the applicant’s response to the first Office action containing amendments and arguments in favor of registration.  The Trademark Act Section 2(d) refusal made in the previous Office action is maintained.  As to the other outstanding issues, the examining attorney has determined the following.

 

Mark is Likely to Cause 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. 1957147 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the previously submitted 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).

 

Analysis of Applicant’s Mark and Registered Mark

 

First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term “STANNO.”  Accordingly, the applicant’s mark, “STANNO,” is similar in sound, appearance, connotation and commercial impression to Registration No. 1957147’s mark “STANNO TUTTI BENE.”   Similarity in any one of these elements alone is sufficient to find a likelihood of confusion.   In re Mack, 197 USPQ 755 (TTAB 1977).

 

Second, the relationship of the goods is evident because both marks are for the same goods.  The overlapping identifications of clothing items and gymnastic and sporting goods evidence the relationship.   Accordingly, the mark is likely to cause consumer confusion as to source.

 

Other Considerations

 

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.  If applicant chooses to respond to the refusal to register, the following issues must also be addressed.

 

Related Entity Claim

 

The applicant states that “It is believed Applicant is related to the owner of Registration No, 1,957,147 (Response of December 18, 2002).”  This is insufficient to overcome the likelihood of confusion determination.  If the entities are related the applicant must state that they are related, explain how they are related and explain any unity over the control of the goods.  The question is whether the specific relationship is such that the two entities constitute a “single source,” so that there is no likelihood of confusion.   TMEP 1201.07(b).

 

No Certified Copy Attached to Response - Application Pursuant to Sections 1(B) and 44 (D)

 

The applicant has filed asserting use in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  When an application is filed pursuant to Section 44(d), this Office presumes, unless otherwise indicated, that the applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S.  TMEP sections 1005 and 1006.01 

 

Under such circumstances, the application may not be approved for publication until a certification or certified copy of the foreign registration and, if appropriate, an English translation have been filed.  It is customary for the translator to sign the translation.  The applicant stated in the response  that a certified copy was attached, however none was attached to the response.

 

Unless the applicant indicates otherwise, this Office will presume that the applicant wishes to rely on Section 1(b) as well as on Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

44(d) Priority Claim Must Be Perfected

 

If the applicant elects to maintain the 44(d) basis, the claim must be perfected.  The applicant has omitted that serial number of the foreign application.  The applicant should state the foreign application serial number for the record.  TMEP 806.07.

 

For Your Information - Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

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

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(703) 308-9108 Ext. 247

(703) 746-8108 (Fax)

ecom108@uspto.gov

(703) 305-8747 (Status)

 

 

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.