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  76/382581

 

Upon cancellation of U.S. Registration No. 2,313,726, the refusal of registration under Section 2(d) based on a likelihood of confusion between the applicant’s mark and mark in that registration is hereby withdrawn.  However, Registration in this case has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), based on a likelihood of confusion between the applicant’s mark and the mark in U.S. Registration No. 1,249,893.  The examining attorney has carefully considered the applicant’s arguments and evidence in support of registration and has found them to be unpersuasive.  Accordingly, the refusal of registration under Section 2(d) is hereby continued and made FINAL.

 

HIGHLY SIMILAR MARKS

 

The applicant’s mark is CIRCO.  The registrant’s mark is CIRCUS.  As noted by the applicant, the English translation of CIRCO is CIRCUS.  Thus, the applicant’s mark is the foreign equivalent of the registrant’s mark.  According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983); TMEP §1207.01(b)(vi).

 

CLOSELY RELATED GOODS

 

The applicant’s goods are “children’s apparel, namely, tops, pants, jumpers, dresses, shoes and underwear.”  The registrant’s goods are hosiery.  Although the goods are not identical articles of clothing, the decisions in the clothing field have held many different types of apparel to be related under Section 2(d).  Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, 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 1975) (“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).  Moreover, the same party commonly markets and sells children’s apparel, including underwear and shoes together with hosiery under the same mark.  Thus, the goods are closely related.

 

Based on the foregoing, a likelihood of confusion exists in the present case.  Accordingly, the refusal of registration under Section 2(d) is, again, hereby continued and made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing 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).

 

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

 

                                                                        Regards,

 

 

/Scott M. Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 x117 (Telephone)

(703) 746-8108 (Fax - Official Responses Only)

 

 

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 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.