UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/379432
APPLICANT: Infinity2, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: TED
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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.
|
Serial Number 76/379432. This letter responds to the applicant’s communication of October 7, 2005.
The examining attorney makes final the refusal registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on the identified goods, is likely to be confused with the registered mark in Registration No. 1596038. TMEP sections 1207.01 et seq. A copy of this registration is attached.
The applicant's mark TED and the registrant's mark TEDDY are similar in appearance, sound, connotation, and commercial impression. The applicant has applied for use of its mark on dietary supplements for weight loss, and the registrant uses its mark on dietary and nutritional supplements. The applicant's and registrant's goods are likely to be encountered by the same purchasers in the same channel of trade. The applicant's and registrant's goods are sufficiently similar to cause the incorrect conclusion that the goods come from the same source.
The applicant argues that there is no likelihood of confusion because its mark consists of two syllables; the “…dy” at the end of its mark distinguishes it from the registrant’s mark. However, 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 §1207.01(b). In this case, the marks contain the similar terms “ted” and “teddy.” “Teddy” is a nickname for “ted.” In cases such as this one in which the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
The applicant also argues that the marks are “weak” because names are descriptive marks not worthy of protection unless the owner can prove secondary meaning. It does not appear that the name “Ted” and its variations are weak when used on nutritional supplements. The attached copy of the search of office records indicates that only two live marks – the applicant’s mark and the registrant’s mark – consist of the term “TED” with various endings when used with Class 5 nutritional supplements.
Even if applicant were able to show that the cited mark was weak, the registrant would still be entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services. See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.
Finally, the applicant argues that there is no likelihood of confusion because its mark is an acronym for “The Enzyme Diet.” However, “The Enzyme Diet” is not a part of this mark. The application seeks registration for the mark TED used on dietary supplements for weight loss. TED and the registrant's mark TEDDY are similar in appearance, sound, connotation, and commercial impression.
For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and a registered mark, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.
Applicant's Response
Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700. 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. §2.65(a).
/Leigh Caroline Case/
Trademark Attorney, Law Office 105
(571) 272-9140
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
*** User:lcase ***
# |
|
Total |
|
Dead |
|
Live |
|
Live |
|
Status/ |
|
Search |
|
|
|
Marks |
|
Marks |
|
Viewed |
|
Viewed |
|
Search |
|
|
|
|
|
|
|
|
|
Docs |
|
Images |
|
Duration |
|
|
|
01 |
|
1 |
|
0 |
|
1 |
|
0 |
|
0:01 |
|
76379432[SN] |
|
02 |
|
7 |
|
5 |
|
2 |
|
0 |
|
P/0:01 |
|
ted*[bi,ti] and supplement[gs] and 005[ic] |
|
Session started 11/7/2005 12:14:32 PM |
Session finished 11/7/2005 12:15:18 PM |
Total search duration 0 minutes 2 seconds |
Session duration 0 minutes 46 seconds |
|
Defaut NEAR limit=1ADJ limit=1 |
Sent to TICRS as Serial Number: 76379432