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  76/376803

 

              This letter responds to the applicant’s communication filed on December 26, 2002.March 27, 2000. The examining attorney has reviewed the applicant’s response and has determined the following.    The examining attorney has also has determined that the ornamentation refusal of registration based on Sections 1, 2 and 45 of the Trademark Act is withdrawn.

 

              Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No.  2536368 as to be likely, when used on or in connection with the identified goods, to cause confusion, or to cause mistake, or to deceive.

             The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) based on Registration No. 2536368 must be maintained and is now made FINAL.  Copies of the referenced registrations were made of record in conjunction with the Office Action on this application mailed on June 27, 2002.

 

SECTION 2(d) FINAL REFUSAL – LIKELIHOOD OF CONFUSION

 

              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).

 

Similarities Between the Marks

 

              The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).[1]  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

               The applicant wishes to register the mark G4 (typed drawing) for various kinds of clothing, in Class 25.  The registered mark is G4 (slightly stylized) with a Plus design above the G and 4 for various types of clothing, in Class 25. Other than the stylized block lettering used by the registrant,[2] the only other difference between the marks is the PLUS “+” design associated with the registrant’s mark.  The design has limited impact on the comparison of the marks since when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  Consumers seeking the registrant’s goods would recognize the product by its name, regardless of the presence or absence of the “+” design element in the mark.

               Moreover,  while it is true that the examining attorney must look at the marks in their entireties under Section 2(d), one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The dominant portion of the marks at hand is the term G4. 

 

              It is well settled that the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  Rather, the issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).  The applicant’s and registrant’s marks have such strong similarities as to appearance, sound and commercial impression that they convey the same general commercial impression and are likely to cause confusion.   

Applicant’s Arguments

 

              The applicant’s chief arguments appears to be:  (a) the its mark casts a different commercial impression than the registrant’s; mark, specifically, the applicant make reference to the additional element, namely, the “+” design in the registrant’s mark;; and (c) the mark G4 is a weak mark.

 

With respect to the first argument, the examining attorney cannot agree that the marks create different commercial impressions.  In support of the examining attorney’s conclusion, he notes that it has long been held that one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is give to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The applicant’s mark is not an exception to the general rule. The dominant portion of the marks at hand is the term G4.[3]

 

            The applicant further argues that the design element in the registrant’s mark conveys different commercial impressions than the applicant’s mark. The examining attorney notes that it has long been held that when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  Accordingly the argument advanced by the applicant is without merit.

 

            The applicant’s analysis also appears flawed when it argues that the design is the dominant part of the mark. The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b). 

 

            Finally, the applicant’s argument that the registrant’s mark is weak,[4] the trademark attorney must respond by first stating that the issue of likelihood of confusion has to be addressed between the registrant's marks and the mark in the instant application, not another mark.  See Frances Denny v. Elizabeth Arden Sales Corp., 120 USPQ 480, 481 (CCPA 1959); Smith v. Tobacco By-Products and Chemical Co., 113 USPQ 339, 341 (CCPA 1957); Cities Service Co. v. WMF of America, Inc., 199 USPQ 493, n.3 (TTAB 1978); The State Historical Society of Wisconsin v. Ringling Bros. - Barnum & Bailey Combined Shows, Inc., 190 USPQ 25, 29 n.3 (TTAB 1976); see J. McCarthy, Trademarks and Unfair Competition, Section 23.11  (vol. 3) (3rd ed. 1995).  It has long been held that each case must be decided on its own merits, previous decisions by examining attorneys in approving marks are without evidentiary value and are not binding upon the agency or the Board.  In re National Novice Hockey League, Inc. 222 USPQ 638, 641 (TTAB 1984). Moreover, the examining attorney notes that even weak marks are entitled to protection against the registration of a similar mark for identical or closely related goods. In re National Data Corp., 222 USPQ 515 (TTAB 1984), aff’d 224 USPQ 749 (Fed. Cir. 1985); Plus Products v. Physicians Formula Cosemetics, Inc. 198 USPQ 111 (TTAB 1978).  

 

            The applicant is reminded that the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979). Thus, the trademark attorney does not find the applicant’s arguments compelling and must continue the determination that the marks are similar.

 

Comparison of Goods

 

              The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

            In the present case, the goods are related because they are the same items of clothing  or they are similar articles of apparel that pass through the same trade channels. The decisions in this field have held many different types of apparel related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) ("WINTER CARNIVAL" for women's boots v. men's and boys' underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) ("ELANCE" for underwear v. "ELAAN" for neckties);  In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) ("ESSENTIALS" for women's pants, blouses, shorts and jackets v. women's shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) ("NEWPORTS" for women's shoes v. "NEWPORT" for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) ("OMEGA" for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) ("GRANADA" for men's suits, coats, and trousers v. ladies' pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) ("SLEEX" for brassieres and girdles v. slacks for men and young men).

 

             Thus, there is every indication that the same customer would encounter the applicant’s goods or advertising therefore, in the same trade channels as the registrant’s goods. Therefore the examining attorney maintains his conclusion that the applicant’s goods and those of the registrant are related.

Applicant’s Argument

 

              The applicant has advanced the argument that his goods are different from those listed in the registration and that its goods travel in trade channels that are different from those of the registrant.  The examining attorney notes that shirts, pants, jackets, sweaters and socks appear as identified items of clothing in both the applicant’s and registrant’s identifications. The examining attorney further notes that sport shirts are a type of shirts, and therefore are the same goods.  Accordingly, at least to the extent of these items, namely, shirts, pants, jackets, sweaters and socks, the goods are identical.

 

            Moreover, as noted above, it has long held that many different types of apparel are related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) ("WINTER CARNIVAL" for women's boots v. men's and boys' underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) ("ELANCE" for underwear v. "ELAAN" for neckties);  In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) ("ESSENTIALS" for women's pants, blouses, shorts and jackets v. women's shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) ("NEWPORTS" for women's shoes v. "NEWPORT" for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) ("OMEGA" for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) ("GRANADA" for men's suits, coats, and trousers v. ladies' pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) ("SLEEX" for brassieres and girdles v. slacks for men and young men). 

 

            As noted above, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

            Furthermore, when the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981). [5] 

 

            Inasmuch as both the registrant and the applicant have not restricted their trade channels, the examining attorney must assume that the registrant's goods and the applicant's goods will be sold everywhere that is normal for such items, such as department stores.  Further, the examining attorney must assume that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.

 

            When the examining attorney compares the identification of goods identified in the application and the registrations, it is apparent that the goods are very related and there are no restrictions on either the applicant’s or registrant’s channels of trade or classes or purchasers.

 

            Based on the foregoing, there is every indication that the same customer would encounter the applicant’s goods, or advertising therefore, in the same trade channels as the registrant’s goods.  Therefore, the examining attorney maintains the conclusion that the applicant’s goods are related to the registrant's goods.

                       

Conclusion

 

            Since the marks are similar and the goods are related, there is a likelihood of confusion and registration must be refused.

            For the reasons stated below, the requirement to amend the Identification of Goods is now made FINAL

 

OTHER

 

             Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the

mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

 

 

 

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

ecom108@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.