UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NOTICE OF SUSPENSION OF APPLICATION

 

Serial Number  76/383186

 

This letter responds to the applicant’s communication filed on January 8, 2003.

 

The  amended recitation of services is accepted and entered into the record.

 

Pending the disposition of Application Serial No(s). 76/329685 and 76/376619, action on this application is SUSPENDED.

 

The following requirements are Continued and will again be addressed and made final if unresolved by the time this application is removed from suspension.

 

Section 2(d) Refusal of Registration is Continued

 

In the first Office Action, registration of the subject PATRIOTS & Design  mark 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 marks shown in U.S. Registration Nos. 0949536 and 0995095 as to be likely, when used on or in association with the identified services, to cause confusion, or to cause mistake, or to deceive.

 

In response to the refusal of registration, the applicant has argued that confusion of the source of the goods of the parties is not likely because the sporting events services in this application, as now amended, are  limited to collegiate sports and because football exhibitions are not offered under the mark..  The examiner has considered this argument but is not persuaded by the same.

 

As stated in the first Office Action, 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).

 

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).  Similarity in any one of the elements of sight, sound and/or meaning is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). 

 

Moreover, the goods and/or services 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 and/or services 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).

 

The dominant literal element in the mark in the instant application is the term PATRIOTS.  The mark in cited Registration No. 0949536, in its entirety, is the identical term PATRIOTS.  The services in Registration No. 949536 are “entertainment services, namely, football exhibitions.”  The services, as now amended, in the instant application include “collegiate sports and sports exhibitions” of virtually every competitive sport except football.  While the amendment to the recitation of services to omit football exhibitions may prevent the services of the parties from being deemed identical services, the sports entertainment services are nevertheless highly related sports exhibitions, the sponsorship of which may be mistakenly attributed to a single source, whether or not the exhibitions are at the collegiate or the professional levels.

 

Similarly, the dominant literal element in the mark in cited Registration No. 0995095 is the term PATRIOTS, which is identical to the dominant PATRIOTS literal element in the applicant’s mark in this application.  The services in Registration No. 995095 are “entertainment services in the form of professional football games and exhibitions” and, as such, are at least highly related to the “sports exhibitions” services in the instant application, even as now amended.  Again, the services of the parties are highly related sports exhibitions, the sponsorship of which may be mistakenly attributed to a single source, whether or not the exhibitions are at the collegiate or the professional levels.

 

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).   Given the relationship between the services of the parties and the  identical nature of the dominant PATRIOTS elements of the respective marks, it is likely that consumers would be confused as to the source or sponsorship of the services of the parties.  Hence, the Section 2(d) refusals of registration are CONTINUED.

 

Requirement for Verified Substitute Specimen Showing Actual Use of the Mark is CONTINUED

 

Also CONTINUED is the requirement for the submission of a verified substitute specimen that shows actual use of the mark in the sale or promotion of the identified services or in the actual rendering of the services.  The examiner is cognizant that the specimen is a photograph of the mark as embedded in the flooring of a basketball court.  This use would, in fact, be perfectly acceptable if the specimens showed an actual game in progress on the pictured court.  This would show use of the mark in the actual rendering of the services.  At present, however, the specimen is only a picture of the mark on flooring and does not show actual use in association with any services whatsoever. 

 

Under these circumstances, the examining attorney refuses registration because the proposed mark does not function as a service mark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  The proposed mark neither identifies and distinguishes the services of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§ 1301.02 and 1301.02(d).  Please note that the proposed mark does not function as a service mark because the specimen submitted with the application is unacceptable as evidence of actual service mark use; therefore, the proposed mark cannot identify and distinguish the applicant's services from those of others nor indicate their source. 

 

Accordingly, the requirement for a substitute verified specimen showing actual use of the mark in association with the rendering or promotion of the identified services is CONTINUED.

 

 

BLoughran

BARBARA  LOUGHRAN

Trademark Examining Attorney

Law Office 113

703.308.9113  Ext. 208