Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number  76/379464

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

OFFICE ACTION

 

This letter responds to the applicant's communication filed on February 10, 2003.

 

The applicant was required to submit a claim of ownership of its prior U.S. Registrations.  The submitted amendment is acceptable and has been entered into the record.

 

LIKELIHOOD OF CONFUSION

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 1,264,038, 1,597,182, 1,864,524, 2,009,990, 2,011,920, and 2,169,911 as to be likely, when used in connection with the identified services, 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) is maintained and CONTINUED.

 

The applicant submits that it is the owner of the cited registrations, registered in the name of Robert Krups GmbH & Co., KG.  “Robert Krups merged into MxK Moulinex GmbH and MxK Moulinex subsequently changed its name to Krups GmbH.   Consequently, all marks registered to Robert Krups are now owned by Krups GmbH.  Applicant has recorded these changes of title against some of its registrations and applications at Reel 2513/ Frame 0739 and Reel 2513/Frame 0509.”  Applicant’s Response at p. 2.

 

Review of the Office’s Assignment Database reveals no assignments have been recorded reflecting such change of ownership for Registration Nos. 1,264,038, 1,597,182, 1,864,524, 2,009,990, or 2,011,920.   The merger and change of name for Registration No. 2,169,911 was recorded at Reel 2549/Frame 0943 and Reel 2521/ Frame 0669.  This registration no longer poses a bar to registration under Section 2(d).  However, until the applicant establishes ownership of the remaining registrations, the refusal is maintained.

 

If the registered marks cited have been assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73.  Merely referring to the recorded assignments of other registrations does not provide sufficient evidence to the current record.

 

PRIOR PENDING APPLICATIONS

 

The applicant was previously informed of four prior pending applications that could potential bar registration under Section 2(d), 15 U.S.C. Section 1052(d).  Application Serial Nos. 75-032014 and 76-644323 have been abandoned and no longer pose a potential bar to registration.   The applicant’s assignment documents regarding Application Serial No. 75-439353 have been recorded at Reel 2442/ Frame 0659 and Reel 2443/Frame 0168, and this application also no longer poses a potential bar to registration.

 

Application Serial No. 75-729490 has been assigned to the applicant Seb S.A.  The applicant’s response indicates that Seb S.A. “owns applicant.”    If the applicant or the applicant’s attorney represents that Seb S.A. owns all of Krups GmbH, the examining attorney will conclude that there is unity of control between the entities and the pending application will not pose a potential bar to registration.  In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986); see TMEP sections 1201.07 et seq regarding related companies and likelihood of confusion.

 

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

 

 

 

 

 

Jennifer D. Chicoski

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 117

(703) 872-9208 - FAX

jennifer.chicoski@uspto.gov

 

 

NOTICE: 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.

 

 

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