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  76/409272

 

This correspondence is in response to the applicant's communication filed March 24, 2003. Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because of a likelihood of confusion between the applicant's mark and U.S. Registration No. 0,952,087.  The applicant’s claim of distinctiveness has been accepted and entered into the record.  Consequently, the surname refusal is withdrawn. 

 

However, the examining attorney has considered the applicant's arguments carefully regarding the likelihood of confusion issue, but has found them unpersuasive.  For the reasons stated below, the refusal under Section 2(d) is maintained and made FINAL.

 

Similarity of the Marks

 

The issue in a likelihood of confusion case is whether the marks create the same overall impression.  Visual Information Institute, Inc. v. Vicuna 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).  In this case, the applicant’s mark LAMBERTI and the registrant’s mark LAMBERT are very similar in appearance and are likely to have the same commercial impression.

 

When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  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 that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Although the parties' respective marks differ by one letter, such an insignificant difference does not distinguish the marks which are otherwise similar in appearance and overall commercial impression.  The applicant argues that consumers will perceive the two marks differently because one mark ends in a vowel and the other ends in a consonant.  See, e.g., In re Pac. Pinnacle Invs. Ltd., 2001 TTAB LEXIS 153 (TTAB 2001).  However, the average purchaser normally retains a general, rather than a specific impression of the many trademarks encountered.  See Grandpa Pidgeon's of Missouri, Inc. v.Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff'd unpub'd (Fed. Cir. 1992). 

 

While Lambert and Lamberti are different surnames, one is of English heritage and the other is Italian, the examining attorney must consider how consumers will perceive the marks visually.  In light of the slight difference between both marks, consumers are likely to mistake one for the other when retaining a visual impression in their minds.  

 

Similarity of the Goods

 

With respect to the goods identified by the two marks, the mark LAMBERT is registered for “hats” and “gloves” whereas the applicant seeks to register LAMBERTI for “men's clothing, namely suits, sports jackets, pants, overcoats, top-coats, raincoats, outer-jackets, leisure suits, shirts, dress shirts, sport shirts, neckwear, socks, underwear, belts, leather jackets, leather coats and sweaters.”  The applicant contends that its goods: overcoats, top-coats, raincoats, outer-jackets, leather jackets, leather coats and sweaters, have no relationship to hats and gloves, and thus confusion is unlikely.

 

The decisions in the clothing 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 (C.C.P.A. 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).

 

The presumption under Trademark Act Section 7(b), 15 U.S.C. Section 1057(b), that the registrant is the owner of the mark, extends to all goods identified in the registration. The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980).   Therefore, the examining attorney must assume that the registrant’s goods and the applicant’s goods are sold everywhere that is normal for such items, such as clothing and 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.[1]

 

As stated in the initial office action, 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).

 

Purchasers are likely to encounter the applicant’s goods and the registrant’s hats and gloves in the same channels of trade, and under such circumstances could mistakenly believe that the goods emanate from a common source.  It is likely that consumers may be led to believe that the applicant's goods are from the registrant.  Accordingly, for the reasons stated above, refusal to register on the Principal Register under Section 2(d) of the Trademark Act is herein made FINAL.

 

Applicant’s Options

 

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).

 

 

 

 

 

/Christopher L. Buongiorno/

Law Office 113

(703) 308-9113  ext. 460

 

 

 

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.